When it comes to international treaties and agreements, India generally signs first and thinks later. We sign on fast and then push the limits of implementing and amending our national laws until the last possible day. India’s accession to the Madrid Protocol was done in a rather similar manner. Either way India is a part of protocol which is touted as the international registration of trademarks. A little over a year down the line and the scenario is rather interesting: the Trademark Office in conjunction with several business organizations keep hosting seminars and conferences on using the Madrid system and yet as on date, there have been only 76 trademark applications filed using the system from India against 6660 trademarks filed through the system into India.
There seems to be a lot of confusion over what exactly the Madrid Protocol is and more importantly how expensive it really is from an Indian perspective.
International Registration – Not a one stop shop:
You can’t file a single trademark application and have it registered in all countries of the world. Trademarks are territorial. Each country has their own laws on trademarks although they generally follow a similar procedure of filing – examination – advertisement – registration. While there isn’t a single body with which you file which can grant you protection world over with a wave of a wand, the Madrid system offers the next best thing.
If you have a trademark application for the mark WONKZOO in India which is either applied for or registered you can file an application with the International Bureau (IB) with the details as per your application in India and you can chose out of the 92 countries that are a party to the protocol/agreement where you would like to file. Each of the trademark offices which you have selected will receive the details and treat the mark WONKZOO as though it was filed in their country directly. The tests of distinctiveness and similarity as per each countries laws will apply.
The IB can be like a one stop shop though; once you have registered the mark in multiple countries, renewing them would be easy since you would have your IB application date as a common date for renewal, and if there are any changes like if you’ve sold the mark or changed your address you would have one common place the file the request.
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How much does it really cost?
Filing through the Madrid system is generally considered cost effective. If you’re filing an application from India – the Indian Trademark Office charges you INR 2000 to forward your application to the IB. (sounds inexpensive enough). If your trademark is a word mark or a label in black and white then for a single trademark in a single class the IB official fees are 653 (Swiss Francs) – which is INR 43000/-. If it is a trademark in colour then the official fees would be INR 59,000/-. After this each of the countries you chose have individual official fees. For instance my mark WONKZOO is colourfully designed logo and I’d like to file the mark in the United States, European Union and Australia the official fees including the IB fees would be INR 1,75,000/-.
It’s no wonder that only 76 applications have been filed from India and most of them feature major corporates like BIRLA or entertainment houses like Yash Raj Films for marks like DHOOM, and DILWALE DULHANIA LE JAYENGE.
What you’re really saving on is technically engaging lawyers in each of the individual countries that you chose to file in. However if the mark in the country is objected to you would have to engage a counsel in that country. While it may seem smart to bypass a lawyer at the filing stage, if you were to engage a lawyer at the start they may be able to advise you in a manner that would avoid an objection to begin with.
The cost advantage need not be assessed only from a filing perspective though. As mentioned above if you had to renew the mark in all the countries that you have registered in, or amend some details it would definitely be cost effective.
What’s the point?
So is using the Madrid system really that useful? Well honestly it depends on your requirements. Are you serious about expanding into a particular market? Do you have a unique mark? Are you looking at multiple countries across the world or just a few? If you are looking at protecting the mark in a few countries only, it may still be advisable to engage a counsel in each country or a counsel in India with associates in those countries. If you are looking to file in a large number of countries then the Madrid system may be the way to go.
The world has changed a great deal from times when a trader’s reputation was known in a given town, and a city at most, to the world at large and almost instantly. You need to evaluate all the available resources at your disposal. Using the Madrid System can be one such effective tool if used properly!