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International Trademark Application Filing under Madrid Protocol

Under Madrid Protocol, who may file an application in India?

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 can file an application.  

Under Madrid Protocol, which is the appropriate office for Indian applicants to file an International Application?

The Indian IP Office is the appropriate office for Indian applicants to file an International Application.

Under Madrid Protocol, is a Power of Attorney required if an International Application is to be filed through a representative or agent?

Yes, a Power of Attorney is required if an International Application is to be filed through a representative or agent

Under Madrid Protocol, what should the size of a trademark which is to be filed in an Application?

3cm x 3cm to 8cm x 8cm

Under Madrid Protocol, what is the format in which a trademark is to be submitted in an Application?

The format in which a trademark is to be submitted in an Application is .JPEG format

Under Madrid Protocol, what are the languages in which an International Application be filed?

An Application under Madrid Protocol / International Application can be filed in the following three (03) languages: –

  1. English
  2. Spanish
  3. French

Under Madrid Protocol, 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.

What are the notifications which the designated office of IPO, India shall communicate to International Bureau 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:

  • Judicial action concerning the basic registration;
  • An action requesting revocation or cancellation of basic registration;
  • An appeal against a decision refusing the basic application;
  • An application requesting withdrawal of the basic application;
  • 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.

Under Madrid Protocol, which law will examine the applications at 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.

Under Madrid Protocol, can priority be claimed in an 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.

Under Madrid Protocol, 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.

Under Madrid Protocol, 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.

Under Madrid Protocol, 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.

Under Madrid Protocol, 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.

Under Madrid Protocol, what is the validity of an 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.

Under Madrid Protocol, 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.

Under Madrid Protocol, 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”.

Under Madrid Protocol, is it possible to file International trademark applications claiming colour?

Yes, International trademark applications claiming colour can be filed.

Under Madrid Protocol, is it possible to file for series marks?

There is no provision for filing of series marks under the Madrid Protocol.

Under Madrid Protocol, is subsequent designation possible?

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

Under Madrid Protocol, 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.

Under Madrid Protocol, can an applicant choose one of the series marks to act as a basis of an Application?

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

To know more about Madrid Protocol in India click here

For more information on filing an international application under Madrid Protocol, please write to us at: info@ssrana.com.

For more information please contact us at : info@ssrana.com