Intellectual Property, in particular trademarks have become one of the most valued assets of organizations around the world. Globalization of trade and commerce, trademark rights associated with a product is recognized as a significant asset by any organization. Products and services manufactured/offered in India is now available worldwide and vice-versa. With growing importance of the rights which subsists in trademarks, it is extremely important to protect the same in all ways possible and in all possible jurisdictions where such products are sold or services are offered.

It may be easy to secure trademark registrations in home country, however obtaining trademark protection in foreign jurisdictions may be challenging. One of the moot contentions which deter organizations from proceeding with foreign filing of trademarks relates to the costs, time and procedure which are involved. While one may choose the countries wherein they have expansion plans and wish to launch their products and services. Based on the business requirements, trademarks may be individually filed with the respective Intellectual Property Offices (‘IPO’) of these shortlisted countries. The process involves appointing and dealing with the local agents in all these countries and coordinating the process and paperwork which can prove cumbersome and eat up time and resources. However if an organization is looking to expand its brand on a global scale and is worried about the complex process involved in dealing with the trademark applications in a number of countries individually, then the Madrid System for filing trademarks is the solution. India became the 90th member when it acceded to the Madrid Protocol in 2013 and joined a network of 114 countries who are party to the Madrid System. Madrid system is an easy and cost effective solution for registering trademarks worldwide.

Filing of application through the Madrid Protocol is fairly simple. The system allows the applicant of a trademark to file one single application in one language, and pay one set of fees to apply for trademark protection in multiple jurisdictions (90+), thus giving the bandwidth of managing the brand portfolio through a centralized system. One of the most beneficial aspects of the system is such that it allows the applicant to seek protection of the mark in new countries that become members of the system subsequently. The system allows automatic registration in designated countries if the trademark office does not raise an objection within the statutory period. It is also worth mentioning that any change in the applicant information, goods/services, renewal, and assignment, license of rights in one or more jurisdictions can be made conveniently by just filing a single application. The downside of the system being the central attack, i.e., any refusal, withdrawal or cancellation of the basic application/registration within five years of the registration date of the international registration will result in the refusal, withdrawal or cancellation of the international registration to the same extent. Secondly, talking about the costs, in case of objections or refusals, appointment of local attorneys is required in order to represent the applicant before the respective trademark offices which might prove costly for the applicant in the long run.

The procedural aspects of the Madrid system are easy to follow. Typically, an application seeking protection under the Madrid can be filed with respect to both pending applications and registered applications. Such pending or registered application, as the case may be, forms the basis of the Basic Application or Basic Registration for the purpose of filing an International Application under the Madrid Protocol. An International Application under the Madrid Protocol is required to be filed with the Office of Origin, i.e. the place of which the applicant is a National or, has a real and effective industrial or commercial establishment or is a domicile. The international application is submitted through the home country IPO which then forwards the same to WIPO. A formal examination is conducted by the WIPO, after which the application once approved; the mark is recorded in the International Register and published in the WIPO gazette of International marks. Thereafter, WIPO sends the applicant a certificate of international registration and notifies the Intellectual Property offices in all the jurisdictions where the applicant wishes to secure protection for the trademark. At this stage, substantive examination is carried out by the respective Intellectual Property Offices of the countries wherein protection is sought. These IP offices will make their decisions in accordance with the respective legislations governing registration of trademarks and within the prescribed time limits. WIPO will then record the decisions of these IP offices in the International Register and notify the applicant. Any procedures subsequent to the refusal such as response to the objection, hearing, appeal etc. are to be carried out directly between the applicant and the respective trademark office without any involvement of WIPO. Once the procedures are completed, the trademark office of the respective jurisdiction which has objected to registration, will issue a statement to WIPO either confirming the refusal or a statement of grant following the provisional refusal. The decision is recorded by WIPO in the International Register and published in the Gazette and a copy of the decision is sent to the applicant.

As per the information available on WIPO website, over 1.3 million trademarks are registered through the system and Madrid is surely emerging as the intelligent choice for brand owners who seek protection in the foreign markets. In India the number of filings through the Madrid system is still to gain momentum as companies are still testing the waters and getting acquainted with the whole system. It’s not long before the simplicity and ease of the system attracts more filings from Indian companies.