Madrid protocol

Overview: 

On April 1, 1996, Intellectual Property right attained its one of the major milestones by entering into Madrid protocol. India becomes its signatory with effect from July 8, 2013. Madrid Protocol system allows applications to be filed using the Madrid system. According to this system, the applicants get the ease of filing a trademark in several countries by filing one application in the home country. The Madrid system is administered by the International Bureau of WIPO situated in Geneva, Switzerland.

Objectives of Madrid Protocol:

  1. Helps obtain protection of marks in several countries. The protection period states from the date of international registration.
  2. International registration is placed under equal footing as national registration, hence the protection for trademarks is made much easier.
  3. International Registration allows renewals, modifications to be recored in the international register through simple and single procedure.
  4. Ease of filing and registration.

Benefits of the Madrid System:

  1. Once the application is filed with the office of origin, one application is required to be filed in one language with single fees instead of filing separate applications with various contracting parties.
  2. Renewals and modifications can be recorded through a single simple procedure steps and single fee.
  3. One expiry dare and single renewal.
  4. The procedure is simple and straightforward. Quick decisions on refusal and acceptance can be taken and notified by the office within given time frame.

Principles of the Protocol:

  • Simplicity
  • Flexibility
  • Economical
  • Fast track procedure
  • Low maintenance

Statutory provisions:

Trademark Act, 1999

After India became a signatory to the Madrid Protocol, significant alignment was made in the IPR Regime to combat with the international norms leading to the inclusion of a new chapter (Chapter IV A) in the Indian Legislation which gives a detailed outline about procedural and statutory guidelines for international Registration of the mark.

Guidelines and Provisions of applicability the International System to Indian trademark filing is entailed under Section 36A to 36G of the Trademarks Act, 1999. These sections give out procedural aspects of filing the trademark. Upon receiving the notification from the International Bureau, the examination of the mark is done by the registry as per the guidelines laid down in sections 9,21,63,74 of the Act and issues necessary directives of acceptance or refusal of the application. 

International Guidelines for the functioning of Madrid Protocol: 

These guidelines provide procedures that applicants have to adhere to while filing an international application with the trademark registry. It also prescribes guidelines to be followed by foreign applications while designating India in their International Application.

The Guidelines have been categorized into two parts wherein Part A deals with the responsibilities of the Indian Trademarks Office as the Office of Origin and Part B deals with the Designated Contracting Party. These guidelines prescribe fees, procedures, and duration of filings. 

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