Posted On: April 3, 2021

ROLE OF MADRID IN GLOBAL BRAND PROTECTION

BY MS. HARINDER NARVAN, MS. APARNA JAIN AND MS. AASHRIKA AHUJA, KNOWLEDGENTIA CONSULTANTS

As the world economy continues to dynamically undergo major shifts, the businesses that thrive eternally are the ones who owing to their branding strategy are able to break barriers of their national boundaries by wisely taking the advantage of Madrid Protocol that allows you to protect your brand globally. These days brand is just more than a mere trademark and has become a more inclusive concept consisting of a name, identifying mark, subsidiary marks, logo, slogan, images, colours, symbols, mental concepts and vision . Brands have not only taken up a role of an asset but can also be an important instrument of social change ultimately changing consumer behaviour patterns and the very DNA how the world and its people are living their lives. As such, according adequate legal protection to your brand assumes great significance. We at Knowledgentia, serve as one stop solution for enabling you achieve Global IPR protection in a very systematic as well as smooth manner owing to our expertise in handling trademark and brand registrations. Legal expression of your brand is your trademark which actually confers on you exclusive rights to prevent third parties from using the signs that distinguish your brand in the course of trade for identical or similar goods or services. In India, a trademark is registered for a period of 10 years and one can register one’s trademark by filing requisite documents with the Indian Trade Marks Office.

Trademark protection is territorial in nature and in case one wishes to acquire protection of one’s own trademark in territories outside India, a separate procedure needs to be followed. One stop solution to protect one’s brand outside India is to follow the Madrid Route which is a simple yet cost effective remedy. Through just filing a single application and paying one set of fees, one can apply for protection in upto 124 countries worldwide.

ADVANTAGES OF ADOPTING THE MADRID ROUTE

  1. Filing is centralised and as such one doesn’t need to file many applications in different languages or pay fees in different currencies or follow many different procedures. One single international application can be filed online on official Indian Government website in a single language by paying fees in a single currency.
  2. Central management system allows for abiding by one renewal date.
  3. Cost effective for Small and Medium sized companies
  4. Rapid international reputation and global brand presence resulting into generating goodwill for trademarks worldwide.

REQUIREMENTS FOR FILING TRADEMARK VIA MADRID ROUTE

The applicant desiring to file an application for international registration of trademark under the Madrid Protocol through India, must be able to meet one of the following three criteria –

  • The applicant should be a national of India, or
  • The applicant should be domiciled in India, or
  • The applicant should have a real and effective business or commercial establishment in India.

Apart from the above applicant must also have a national trade mark application or registration of a trademark with the Indian Trade Marks Registry. This national mark must be used as the basis of the international application. The international application will have the same trade mark as mentioned in the national trade mark application or registration; and the list of goods and services mentioned in the international application should be identical with or no wider than that of the basic (national) mark.

PROCEDURE FOR FILING APPLICATION VIA MADRID ROUTE

  1. File an application through your National/Regional IP Office
    Before filing an international application, one needs to obtain trademark registration in home IP office. After obtaining this Basic mark, International application has to be submitted through the same IP Office which then certifies it and forwards it to WIPO.
  2. Formal Examination by WIPO
    After formal examination and approval from WIPO, the mark is recorded in International Register and published in WIPO Gazette of International Marks. Thereafter, WIPO sends a
    certificate of international registration and notifies IP Offices in all territories where mark needs to be protected.
  3. Substantive Examination by National or Regional IP Office
    The IP Offices of concerned countries will give their decision within 12 to 18 months and the same shall be notified to applicant through WIPO.

The International Registration of a mark is valid for a period of ten years and the same can be subsequently renewed therafter.
We at Knowledgentia, enable our clients to secure legal protection for trademarks globally but also ensure that the process is smooth, cost effective and contributive to growth of one and all.

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