Who May Use the Madrid System?
The Madrid Protocol is a global agreement that makes it possible for people or companies to get trademark protection in numerous nations via a centralized system. The Madrid Union has 100 member states and multilateral organizations and encompasses regions in numerous nations. The Madrid Protocol offers a user-friendly, economical, and quick set of procedures in a single application that enables a brand to protect itself on a global scale.
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Trademark Hurdles in Non-Madrid Protocol States
States that are not contracting parties under the Madrid Protocol include Canada, Taiwan, South Sudan, Iraq, Syria, etc. Therefore, non-contracting parties are found in countries such as these. The applicant must file separate applications to obtain protection for their mark.
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How to Register Internationally with Madrid Protocol
The process of international trademark registration consists of three simple steps:
A single filing for protection in many territories
Earlier, the home country had to register an international registration as well as physically register it in the trademark offices of all the countries where protection was sought. Now many countries have adopted the Madrid Protocol, reducing the lengthy task of filing and requiring only a single application to register a trademark.
The Indian Trade Marks Act of 1999 states that the applicant can file an international application digitally at http://www.ipindia.gov.in/trade-marks.htm or physically in their home country. The applicant can file an international trademark application at the IP India website, marking the member countries where they seek protection. The Madrid Protocol only allows the application of English, French, and Spanish.
Notification to designated countries
The World Intellectual Property Organization (WIPO), a global forum for IP services, policy, and information, is reaching out to the members of the Madrid Union regarding the application of international registration. The member states must adhere to a time constraint of 18 months to raise their objections concerning the registration of a trademark.
Registration of Trademark
If no objection is raised within 18 months from the date of the international registration, the application will be automatically registered. After successfully registering, the member states consider the trademark granted and protected. Additionally, trademark protection can be renewed every 10 years.
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Benefits of the Madrid System for Worldwide Trademark Filing
The Madrid System offers numerous advantages, including:
Easy Filing Of Trademarks In Multiple Countries
The Madrid Protocol was established to simplify the registration procedures in every nation where the applicant desires to register their trademark for protection. It creates a system where members of the chosen member nations can obtain protection with just one application and a set cost. As a result, the Madrid Protocol created the filing of trademarks through a single application, a single attorney or lawyer, or representation, eliminating the time-consuming responsibilities of filing protection in each member country. This makes it easier for the brand owner to avoid arduous procedures and protect his mark across different jurisdictions.
Cost-Effective And Convenient To File Trademarks
The Madrid Protocol was designed in such a way as to lessen the burden of multiple filings, as mentioned above, and pave the way for the effective method of filing only once. The lack of multiple filings also results in the applicant spending less money, which is one of the main reasons why an applicant chooses the Madrid Protocol.
No Language Constraints
An applicant may choose one of the three official languages under the Madrid Protocol, including English, French, or Spanish. Due to the widespread use and acceptance of all three languages, applicants have the option to choose their preferred language.
No Hiring Of Multiple Local Agents
The task of reducing the hiring of local agents in each country where protection is sought. it can accomplished with the help of a single filing system. One agent in the home country is enough for registration under the system.
Beneficial To The National Economy
The Madrid system makes it easier for the contracting parties to protect their trademarks by regularizing the filing procedure. The export of goods between designated member states that the parties want protection from has economic benefits as well. The government and the national economy benefit from the Madrid system as it helps generate revenue through the export of goods. The Honda Report example further discusses the apparent economic benefits.
Simple, centralized, and cost-effective post-registration procedures
Before the Madrid Protocol, if there was any error after the registration, it was necessary to redo the process of altering the application for each country’s registration compliance, which incurred additional costs and reduced efficiency. However, the Madrid Protocol unified the procedure to alter those changes by requiring a single application and a one-time fee submission. The applicant’s job becomes extremely easy and not time-consuming.
Speedy Procedure
Countries that have adopted the Madrid Protocol observe a fast-track process, granting high-priority approval to their trademarks compared to countries that have not adopted the Madrid Protocol.
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The Madrid Protocol Case Study
Toshiyuki Matsudaira’s report on the example of Honda Motors Co. (Honda Report) demonstrates the benefits of the Madrid Protocol. The report states that the Honda brand sold considerably fewer units in the target market in 2010 despite its efforts to improve and refine its brand strategy. To eliminate this threat, Honda Motors Co. Ltd. kept forging the market to combat the duplicate and dummy brands.
The company used the Madrid System as a new strategy to tackle this problem. The Honda Report states that the Madrid Protocol offers various benefits, including single application by the contracting parties, automatic protection, easy extension, a single expiration date, and cost-effective administration. The report further observes how the use of the Madrid Protocol increased the cost-effectiveness and efficiency of filing an international registration of the trademark.
The system’s benefits are also visible, as the number of companies using the Madrid Protocols has also increased from 2006 to 2010, paving the way for the expansion of the market and globalization. Since 1993, the Madrid Protocol has observed an increase in the number of applications from 20,000 to more than 100,000 in member states like China, as stated in The 2010 Annual Development Report for the Trade Mark Strategy.
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Conclusion
The complete Madrid Protocol offers a very user-friendly, affordable, and compliant interface that assists brand owners in securing and defending their brand from any potential threats. Member states and market players have widely accepted this protocol. Madrid protocol has proven to be very effective time and again. Currently, countries that are part of the protocol are the only ones to which the international registration of a trademark can apply. However, companies can protect trademarks in non-member countries by creating a memorandum of understanding. Expanding the scope of protection for the trademark would give brand owners more stability and protection.
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