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FREQUENTLY ASKED QUESTIONS(FAQ) - MADRID PROTOCOL IN INDIA


 

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  1. What is Madrid Protocol?
    It is a treaty that provides for the international registration of trademarks by filing a single application in one language in one set of fee in one currency.

  2. When was the Madrid Protocol adopted?
    The Madrid Protocol was adopted in 1989.

  3. When did the Madrid Protocol did come into force?
    The Madrid Protocol came into force on April 1, 1996.

  4. When did India join the Madrid Protocol?
    India joined the Madrid Protocol on July 08, 2013.

  5. Which are the other SAARC countries who are signatories to the Madrid Protocol?
    Bhutan

  6. What are the benefits of the Madrid Protocol?
    I. Simplicity in filings
    II. Flexible
    III. Economical
    IV. Speed
    V. Simplicity of maintenance

  7. To which countries may an application under Madrid Protocol / International Application be designated?
    An Application under Madrid Protocol / International Application may be designated only to countries which are signatories to the Madrid Protocol. Non-signatory countries cannot be designated.

  8. How many countries are signatories to the Madrid Protocol?
    91 countries (including India) are signatories to the Madrid Protocol.

  9. What is the term of registration?
    The term of registration under the Madrid Protocol is 10 years from the date of application. It is further renewable.

  10. Which is the regulatory body?
    International Bureau of World Intellectual Property Organization (IB of WIPO)

  11. Which is the appropriate office for Indian applicants to file an Application under Madrid Protocol / International Application?
    The Indian IP Office

  12. Who may file an application through this Protocol?
    A natural person or a legal entity who, has a commercial establishment in, or is a domicile or national of, a country which is signatory to the Madrid Protocol

  13. What does BASIC APPLICATION/ REGISTRATION mean while filing an application through this Protocol?
    BASIC APPLICATION/ REGISTRATION means the application or registration which is pending or is registered with the Office of Origin, and which is used as the basis of Application under Madrid Protocol / International Application.

  14. What is the regulation for specification of goods and services?
    Only the specification of goods and services which is registered with the Office of Origin can be filed/ registered in the application under Madrid Protocol / International Application/ registration.

  15. What is an Office of Origin?
    An Office of Origin is the trademark office of the Contracting Party with which the applicant for international registration has the necessary connection (through establishment, domicile or nationality) to be entitled to file an Application under Madrid Protocol / International Application.

  16. What is meant by “designation”?
    A “designation” means an indication (by ticking a box), in the international trademark application form, of one or more Contracting Parties where it is intended to apply for protection of a mark.

  17. Is subsequent designation possible?
    Yes, additional country(ies) may be designated in International registration through subsequent designation.

  18. What is the effective date of such subsequent registration?
    The registration of a mark in a subsequently designated country will be effective from the date of filing the application for subsequent designation.

  19. Which are the signatory countries to the Madrid Protocol?
    Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Denmark, Egypt, Estonia, European Union, Finland, France, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Madagascar, Moldova, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, North Korea, Norway, Oman, Philippines, Poland, Portugal, Romania, Russian Federation, San Marino, Sao Tomé and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, South Korea, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, USA, Uzbekistan, Viet Nam and Zambia.

  20. What are the languages in which an Application under Madrid Protocol / International Application can be filed?
    An Application under Madrid Protocol / International Application can be filed in the following three (03) languages:-
    I. English
    II. Spanish
    III. French

  21. Can priority be claimed in an Application under Madrid Protocol / International Application?
    Yes, priority of an earlier filing of the same trademark filed/ registered with the Indian IP Office can be claimed in an Application under Madrid Protocol / International Application.

  22. Is it possible to file International trademark applications claiming color?
    Yes, International trademark applications claiming color can be filed.

  23. Is it possible to file for series marks under the Madrid Protocol?
    There is no provision for filing of series marks under the Madrid Protocol.

  24. Can an applicant choose one of the series marks to act as a basis of an Application under Madrid Protocol / International Application?
    Yes, an applicant can choose one of the series marks to act as a basis of an Application under Madrid Protocol / International Application.

  25. Which is the form for filing an Application under Madrid Protocol / International Application?
    Form MM2(E)

  26. Is a Power of Attorney required if an Application under Madrid Protocol / International Application is to be filed through a representative or agent?
    Yes, a Power of Attorney on form TM-48 is required.

  27. What is the format in which a trademark is to be submitted in an Application under Madrid Protocol / International Application?
    .JPEG format

  28. What should the size of a trademark which is to be filed in an Application under Madrid Protocol / International Application?
    3cm x 3cm to 8cm x 8cm

  29. Is it necessary for an applicant to have a Digital Signature Certificate?
    Yes, the applicant needs to have a level 3 Digital Signature Certificate of a competent authority recognized by the Intellectual Property Office (IPO) of India.

  30. What is the fee charged by the Intellectual Property Office (IPO) of India?
    INR 2000 is charged by the IPO, India as handling fees.

  31. What is an IAOI number?
    An IAOI number is the Application under Madrid Protocol / International Application number which is generated by the IPO, India upon successful receipt of the Application under Madrid Protocol / International Application.

  32. What is the basic fee for Indian Applicants?
    o CHF 653, where no reproduction of the mark is in color
    o CHF 903, where any reproduction of the mark is in color

  33. What is the complimentary fee?
    A complimentary fee of CHF 100 is to be submitted for the designation of each designated Contracting Party in respect of which an individual fee is not payable.

  34. What is an individual fee?
    An individual fee is the fixed fee for each country designated in an Application under Madrid Protocol / International Application.

  35. What is the basic fee for designations subsequent to the Application under Madrid Protocol / International Application?
    CHF 300

  36. Which is the appropriate office for the submission of fees?
    The fees for filing an Application under Madrid Protocol / International Application are to be submitted directly by the applicant to the International Bureau of World Intellectual Property Organization (IB of WIPO).

  37. At what stage fees are to be paid to the IB of WIPO?
    Basic fees, complimentary fee (if any) and individual fee (if any) are to be paid by the applicant upon receipt of an alert from the IPO, India informing about the transmission of the Application under Madrid Protocol / International Application to IB of WIPO and the amount of Swiss francs (CHF) to be paid directly to WIPO.

  38. How will the WIPO notify irregularity(ies) in an Application under Madrid Protocol / International Application?
    If any irregularity is found in an Application under Madrid Protocol / International Application, the International Bureau notifies such irregularities to the Office of Origin concerned as well as to the applicant/ applicant’s authorized representative.

  39. What is the time frame for responding to irregularity(s)?
    Three (03) months from the date of such notification.

  40. What is the procedure if the response received from the applicant or his representative/ agent is not satisfactory?
    The designated office shall send a reminder to the applicant/ agent/ attorney concerned along with its suggestion.

  41. What is the validity of the International Registration(s) if the Basic Application or Basic Registration ceases to exist?
    The protection resulting from the International Registration(s) ceases to have effect if before the expiry of five (05) years from the date of the International Registration(s), the Basic Application or Registration, as the case may be, ceases to exist (by way of any refusal, withdrawal or cancellation etc.). This process of cancellation of International Registration(s) due to cessation of effect of Basic Application or Registration, as the case may be, is called “CENTRAL ATTACK”.

  42. What is the procedure for communication as to such ceasing of effect?
    Where the Basic Application or Basic Registration mentioned in the Application under Madrid Protocol / International Application ceases to exist (by way of any refusal, withdrawal or cancellation etc.) within a period of five (05) years from the date of International Registration, the designated officer of the TMR shall notify this fact to the International Bureau of WIPO in Annexure 6 (as per Model form 9) and through the system.

  43. Can an Applicant convert its International Registration into National Registration with a designated country?
    Yes, an Applicant can convert its International Registration into National Registration by paying the requisite applicable fee.

  44. What are the notifications which the designated office of IPO, India shall communicate to IB of WIPO concerning Basic Application or Registration?
    The Designated Office shall also communicate to the International Bureau, if the TMR is aware that any of the following is pending in respect of the basic application or registration, before the expiry of five (05) years from the date of International registration:
    I. Judicial action concerning the basic registration;
    II. An action requesting revocation or cancellation of basic registration;
    III. An appeal against a decision refusing the basic application;
    IV. An application requesting withdrawal of the basic application;
    V. An opposition to the basic application.
    Such notification shall indicate that the action in question has not yet resulted in a final decision and once the decision has become final, the IPO, India shall promptly notify the IB of WIPO accordingly.

  45. Under which law will the Application under Madrid Protocol / International Applications be examined by the concerned designated IP Offices?
    The Application under Madrid Protocol / International Applications will be examined as per the local applicable laws of the concerned IP Offices.

  46. What is the time frame for the designated country IP Office to communicate their acceptance or refusal?
    The time frame for notifying the acceptance or refusal is 18 months from the date of receipt of the Application under Madrid Protocol / International Application.

  47. What will happen if acceptance or refusal is not notified by the designated country IP Office within the aforesaid time frame?
    The Application under Madrid Protocol / International Application will automatically proceed to registration.

  48. What is the validity of an Application under Madrid Protocol / International Application if the same is accepted/ registered by one designated country IP office and refused/ opposed in other?
    The validity of an International Registration is not affected in a designated country if it is refused/ opposed in another designated country IP Office.

  49. What are the differences between Madrid Agreement and Madrid Protocol?
    The Madrid Agreement and the Madrid Protocol are independent, parallel treaties, with separate, but overlapping, regulations and memberships. The differences between the two treaties are as follows:

    S. No.

    MADRID AGREEMENT

    MADRID PROTOCOL

    1.  Basic of an International Registration

    Applications can only be filed after the national registration is complete.

    Applications can be filed even if the national application is pending

    2. Time Limit for Refusal Period

    Trademark Offices have to inform the International Bureau within 12 months if any objection is raised.

    Each Trademark Office can opt for a period of 18 months or even longer in case of refusals based on oppositions.

    3. Term of Protection

    Term of Registration is 20 years and thereafter subject to renewal.

    Term of Registration is 10 years and thereafter subject to renewal

    4. Fee Structure

    Each Trademark Office charges individually, i.e. fixed fee for each designated Contracting Party.

    Cost of filing an application is considerably less.

    5. Conversion to National Application

    Trademark applications cannot be converted into national application if any national application on which the International Registration is based is refused, withdrawn or cancelled.

    Application can be converted into a national application if it retains the date or priority date of the International Registration.

    6. Filing Language

    Applications can only be filed in French.

    Applications can be filed in French, Spanish and English.

    7. Flexibility in Choice of Office of Origin

    An Applicant has less choice over the trademark office in which it must file: It may only file in a contracting country to the Agreement in which it has “real and effective industrial or commercial establishment”. Only if it has no such establishment may it file in the Office in the country of its domicile if that country is party to the Agreement or, if it has no domicile in such country, then it may file in a country party to the Agreement where it is a national.

    the Applicant may choose his Office of Origin based on establishment, domicile or origin.

    8. Membership of EU

    European Union is not a party to the Agreement.

    European Union is party to the Protocol.

For more information on FAQ on Madrid Protocol in India please write to us at: info@ssrana.com

 
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