Indian businesses increasingly seek to protect their brands outside India as they enter international markets, export products or provide services to customers in other countries.
The Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO), provides a mechanism through which trademark owners can seek protection in multiple member countries by filing a single international application.
For an Indian trademark owner, however, the Madrid System should not be understood as a worldwide trademark registration. The international application provides a centralized route for seeking protection, while the substantive examination of the trademark remains with the intellectual property office of each designated country.
This article explains the basic procedure for filing an international trademark application from India, the applicable fees and some important practical considerations.
What is the Madrid System?
The Madrid System is an international trademark registration system administered by WIPO.
It enables an eligible trademark owner to seek protection in multiple Madrid System member countries through a centralized international application rather than initially filing separate national applications in every country.
WIPO currently describes the system as covering more than 130 export markets.
The system also provides centralized mechanisms for managing an international registration, including certain subsequent changes, renewals and additional designations.
Can a trademark owner in India use the Madrid System?
Yes, subject to the applicable requirements.
A person or entity seeking to use India as the Office of Origin must have the necessary connection with India and must have an Indian trademark application or registration on which the international application can be based.
The Indian trademark application or registration is generally referred to as the basic application or basic registration.
The international application must correspond to the relevant particulars of the Indian basic application or registration.
Filing an international trademark application from India
An international application originating from India is submitted through the Indian Trade Marks Registry, which acts as the Office of Origin.
The international application is made using the applicable Madrid System form, including Form MM2(E) where applicable.
The Indian Trade Marks Registry examines the application for the purpose of certification and transmission to WIPO.
Once the requirements are satisfied, the certified application is transmitted to the International Bureau of WIPO.
WIPO then undertakes its own formal examination.
The Office of Origin therefore performs an important certification function, while WIPO administers the international registration system.
What are the stages of filing?
The process can broadly be represented as:
Indian trademark application or registration
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International application through the Indian Trade Marks Registry
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Certification by the Indian Trade Marks Registry
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Transmission to WIPO
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Formal examination by WIPO
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International registration
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Notification to the designated countries
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Substantive examination by each designated country’s trademark office
WIPO confirms that the Office of Origin checks the international application against the particulars of the national or regional trademark, certifies it and sends it to WIPO.
Is an international trademark registration automatically valid in all countries?
No.
This is one of the most important aspects of the Madrid System.
An international registration does not mean that the trademark has automatically been accepted under the domestic trademark law of every designated country.
After WIPO completes its formal examination and records the international registration, the designated countries examine the trademark under their respective national laws.
A designated country may therefore issue a provisional refusal.
WIPO states that substantive examination is carried out by the intellectual property office of each designated Madrid System member and that the scope of protection is determined by the domestic law of that member.
Accordingly, an international filing should not be treated as a guarantee of registration in every country selected by the applicant.
What are the fees for an international trademark application?
The total cost depends upon several factors.
Broadly, there are:
- the fee payable in connection with the Indian Office of Origin;
- the WIPO basic fee;
- the fees applicable to the designated countries; and
- additional class-related fees, where applicable.
WIPO basic fee
WIPO presently specifies the following basic fees:
- 653 Swiss francs (CHF) for a black-and-white mark; and
- 903 Swiss francs (CHF) for a mark in colour.
Additional fees may apply depending upon the countries designated and the number of classes.
Are WIPO fees payable in Indian Rupees?
The distinction between the Indian fee and the WIPO fee is important.
WIPO’s Madrid System fees are processed in Swiss francs (CHF).
Therefore, the WIPO international application fee is not an INR-denominated fee.
The applicant may use an available online payment method and the applicant’s bank or card provider may effect the corresponding currency conversion. However, the WIPO fee itself is calculated and processed in CHF.
The Indian Trade Marks Registry’s own handling fee is a separate matter and should not be confused with the WIPO international application fee.
What is the Indian Trade Marks Registry handling fee?
An Indian applicant should also take into account the applicable fee charged by the Indian Trade Marks Registry for handling, certification and transmission of the international application.
This is separate from the fees payable to WIPO.
Accordingly, when estimating the total cost, an applicant should not consider only the WIPO basic fee.
The applicable Indian official fee and any other applicable charges should also be taken into account.
How is the WIPO fee calculated?
The WIPO fee depends upon the particulars of the proposed international registration.
Among other things, the calculation may depend upon:
- whether the mark is in black and white or colour;
- the number of classes;
- the countries or territories designated; and
- whether a designated country applies an individual fee rather than the standard complementary fee.
WIPO provides a fee calculator for determining the applicable amount before filing.
For this reason, it is not advisable to quote a single universal amount for every Madrid Protocol application.
Choosing the countries to be designated
The applicant should carefully consider where trademark protection is commercially required.
Relevant considerations may include:
- countries where goods are currently sold;
- countries where services are currently provided;
- countries where export activity is planned;
- countries where expansion is contemplated;
- important manufacturing or distribution markets; and
- jurisdictions where protection of the brand is commercially important.
Designation of every available Madrid System member may not necessarily be commercially or economically appropriate.
The countries selected should therefore correspond to the applicant’s actual or reasonably anticipated business requirements.
Why should the Indian basic application be carefully examined before filing?
The international application is based on the Indian trademark application or registration.
It is therefore important to verify the particulars of the Indian mark before proceeding.
The applicant should consider, among other things:
Trademark representation
The representation of the mark should correspond with the basic application or registration.
Ownership
The applicant’s name and ownership particulars should be carefully verified.
Goods and services
The goods and services covered by the international application must be considered in relation to the Indian basic application or registration.
Classification
The relevant Nice Classification should be checked carefully.
Pending proceedings
Any pending objection, opposition, rectification, assignment or other proceeding affecting the basic application or registration should be considered before proceeding with the international application.
These checks can help avoid procedural complications at the international filing stage.
What happens if WIPO finds an irregularity?
WIPO conducts a formal examination of the international application.
If an issue is identified, WIPO may issue an irregularity notice requiring the necessary correction within the applicable period.
WIPO explains that formal examination includes matters such as contact details, designated members, image quality and payment of the applicable fees.
It is therefore important that the application be checked carefully before submission.
What happens after international registration?
Once the formal requirements are satisfied, WIPO records the mark in the International Register and notifies the designated Madrid System members.
The trademark is then examined by the relevant intellectual property office of each designated country.
A designated country may:
- grant protection;
- issue a provisional refusal; or
- take other action under its domestic trademark law.
The applicant may therefore have to deal with the requirements of individual jurisdictions after the international registration has been recorded.
Provisional refusal in a designated country
A provisional refusal issued by a designated country is not necessarily the end of the matter.
The appropriate response depends upon the reason for refusal and the procedural requirements of that particular jurisdiction.
Possible issues may include:
- earlier conflicting trademarks;
- lack of distinctiveness;
- classification or specification issues;
- absolute grounds for refusal;
- formal deficiencies; or
- other grounds recognized under the domestic law of the designated country.
The response procedure, deadlines and representation requirements can differ from one country to another.
Consequently, a refusal should be examined with reference to the law and procedure applicable in the particular jurisdiction.
The importance of the basic Indian trademark
An international registration originating from India has an important relationship with the Indian basic application or registration.
The Madrid System contains a dependency mechanism during the initial period.
Consequently, applicants should continue to monitor the status of the Indian basic application or registration after filing the international application.
Events affecting the basic application or registration can have consequences for the international registration during the applicable dependency period.
One of the principal advantages of the Madrid System
The Madrid System can simplify international trademark management.
Instead of maintaining entirely separate administrative processes for every country in relation to matters that can be centrally managed, the Madrid System provides a centralized mechanism for several transactions.
Depending on the circumstances, an international registration may subsequently be managed in relation to matters such as:
- renewal;
- change of name or address;
- change of ownership;
- limitation of goods and services; and
- subsequent designation of additional Madrid System members.
This centralized structure is one of the principal practical advantages of the system.
Is the Madrid System suitable for every business?
Not necessarily.
The Madrid System can be particularly useful where protection is required in several member countries.
However, the appropriate filing strategy depends upon the applicant’s circumstances.
For example, where protection is required only in one country, a direct national filing may sometimes be considered.
Where protection is required in several jurisdictions, the Madrid System may offer administrative advantages.
The choice should therefore be made after considering the intended markets, applicable fees, domestic examination requirements and the applicant’s longer-term commercial plans.
Practical checklist before filing
Before proceeding with an international trademark application from India, it is prudent to verify:
1. Indian basic application/registration
Confirm the application or registration number and current status.
2. Applicant details
Verify the exact legal name, address and other particulars.
3.Trademark
Ensure that the representation of the mark is correct.
4.Goods and services
Review the specification carefully.
5.Classes
Confirm the relevant classes.
6.Designated countries
Select the countries where protection is commercially required.
7.WIPO fees
Calculate the applicable fees in CHF.
8.Indian handling fee
Verify the applicable fee payable to the Indian Trade Marks Registry.
9.Potential conflicts
Consider whether earlier trademarks or other grounds of refusal may present issues in the proposed jurisdictions.
10.Post-filing obligations
Keep track of communications from WIPO and the designated national or regional offices.
Conclusion
The Madrid System provides an important international route for Indian trademark owners seeking protection in multiple countries.
Its principal advantage lies in the ability to use a centralized international filing and management system while retaining the substantive examination of the trademark within the legal framework of each designated country.
An international trademark filing should therefore be approached as more than a form-filing exercise.
The Indian basic application or registration, the specification of goods and services, the countries selected for designation, the applicable WIPO fees and the possibility of examination or refusal in individual jurisdictions should all be considered before filing.
Applicants should verify the latest procedural requirements and official fees from the Indian Trade Marks Registry and WIPO before proceeding, as fees and procedures may change from time to time.
Official sources
World Intellectual Property Organization (WIPO) – Madrid System
Office of the Controller General of Patents, Designs and Trade Marks (IP India) – International Trademark Protection
Disclaimer: This article is provided for general informational and educational purposes. It does not constitute legal advice and should not be treated as a substitute for advice based on the facts and circumstances of a particular matter. Trademark laws, procedures and official fees are subject to change.