Filing trademarks in India and overseas through the Madrid protocol | Filing a Trademark internationally

What is the Madrid Protocol?

The Madrid Protocol provides for the international registration of trademarks by filing a single International Application. Indian companies which have procured trademark registrations and/or have pending applications with the Trade Marks Office in India can file a single International Application (“IA”) under the Madrid Protocol.This IA can be filed across 92 countries based on the same particulars as of the registration/pending application in India (Home Application). The countries which shall be covered by the IA are to be designated by the Applicant at the time of filing. Once the application has been filed, it is examined and/or prosecuted under the local laws of these designated countries.

What are the advantages of filing under Madrid Protocol?

Reduction in cost : The additional fee of engaging local counsels at the time of filing of the application is not required. This reduces the cost of filing the application substantially as a single request can be filed for recordal of assignment, name change, renewals etc.

Reduction in time : Generally, the countries designated at the time of filing have to either accept or refuse the application within a period of eighteen (18) months from the date of filing of the International application. This reduces the time frame of procuring registrations considerably.

What are the disadvantages of filing under the Madrid Protocol?

Any change owing to opposition/rectification/cancellation/objections in the Home Application within a period of five (5) years from the filing of the IA shall also identically change the particulars of the International application across all designated countries.

If the Home Application is opposed and the application is eventually removed, the International application in such cases shall also be removed from all designated countries.

The specifications of goods and services that are accepted for various countries and their respective trademark offices may differ.