Steps for Filing an International Trademark under Madrid

1. Application Preparation:

Before initiating the international trademark registration process, thorough application preparation is needed. The applicant needs to compile all necessary information, including:

•  Details of the mark as provided in the international application.
• Specification of goods and services categorized according to the International Classification of Goods and Services.
•  Any priority claims if applicable.
•  Information regarding seniority claims, if declared.

Eligibility Check:

1.1 Ensure the applicant meets one of the criteria: a national of India, domiciled in India, or has a real business in India.

1.1Possess a national trademark application or registration with the Indian Trade Marks Registry.

• Relevant Legal Provisions:
  • Section 36D of the Trade Marks Act 1999
  • Rule 67D of the Trade Marks Rules 2002
  • Article 2 & 3 of the Madrid Protocol
  • Rule 9 of the Common Regulations

2. Submission to Office of Origin:

Upon completion of the application, the next step involves submitting it to the Office of Origin (IPO). This office will verify the formal requirements and conduct a preliminary examination. If the application meets the criteria, the Office of Origin forwards it to the International Bureau. The Office of Origin may issue a filing receipt, confirming the submission of the international application.

Filing international Application:

1. Submit the International Application (form MM 2(E)) online through the official website www.ipindia.nic.in.
   1. If submitted through an agent, attach a duly executed Power of Attorney (form TM-48).
   2. Include form MM18(E) for the United States or indicate a second language for the European Union.

The international application form (MM2) must contain:

(i) your name and address;

(ii) the reproduction of your mark, which must be identical to your basic mark in India;

(iii) a list of the goods and services for which protection is sought, which must be fully covered

by those indicated in your basic mark; and

(iv) a list of members of the Madrid Union in which protection for the mark is sought (designated

Contracting Parties).

These requirements are mandatory and have an impact on the date of the international application.

The international application must also contain:

(i) an indication of your entitlement to file (establishment or domicile in India or Indian nationality);

(ii) trade mark priority claim, if applicable;

(iii) name and address of representative, if appointed;

(iv) number and date of your basic mark at the India Trade Marks Registry;

(v) indications of the mark (kind of mark, colour claim if applicable);

(vi) description of the mark, if required;

(vii) transliteration of the mark, if applicable;

(viii) amount of the fees being paid and method of payment.

2. Trademark Details:
   1. Scan the trademark separately (jpeg format, size: 3cmx3cm to 8cmx8cm) and attach it to the application.
   2. Declare the textual aspect for plain text trademarks.
3. Digital Signature:
   1. Obtain a level 3 Digital Signature Certificate from a recognized authority.
4. Fee Payment:
   1. Pay Rs 2000/- as handling fee for the International Application through the provided payment gateway.
5. Acknowledgement:
   1. Receive an acknowledgment (Annexure 1) with an IAOI Number upon successful submission.

The designated officer of the Trade Marks Registry verifies the application against specified criteria.If deficiencies are identified, the applicant receives a notification (Annexure 2) to rectify them within one month.Proper applications are certified, transmitted to the International Bureau of WIPO, and an alert is sent to the applicant

Accompany your international application with fees payable to WIPO:

• Basic fee (653 or 903 Swiss francs depending on color reproduction).
• Individual fee for each designated Contracting Party with fixed fees.
• Complementary fee (100 Swiss francs) for each designated Contracting Party without fixed fees.
• Supplementary fee (100 Swiss francs) for each class beyond three classes, unless only designating Contracting Parties with fixed fees.

3. International Bureau Examination:

Once received by the International Bureau, the application undergoes a detailed examination to ensure it complies with applicable requirements. This examination includes:

• Verification of all data provided in the international application.
• Determination of the application’s compliance with the International Classification of Figurative Elements of Marks (Vienna Classification).
• Evaluation of any indications related to seniority claims.

If the application meets these criteria, the International Bureau proceeds with the registration process. Any issues or irregularities may be communicated to the applicant for correction.

4. Registration in International Register:

Upon successful examination, the International Bureau registers the mark in the International Register. This step involves:

•  Issuing a certificate of international registration, containing details from the application.
• Notifying the designated members’ offices about the international registration.
• Optionally sending the certificate to the holder through the Office of Origin, if requested.
• Publication of the international registration in the Gazette.

• It’s important to note that while registration in the International Register provides a record of the application, it doesn’t guarantee protection for designated members. The protection depends on the examination conducted by the offices of the designated members.

5. Notification to Designated Offices (C):

Following the registration in the International Register, the International Bureau takes the step of notifying the Offices of the designated members about the international registration. The notification includes:

• Details of the international registration.
• Information regarding the mark, including specifications of goods and services.
• Confirmation of compliance with applicable requirements.

Upon receiving the notification, the designated offices are informed of the pending international registration and given the opportunity to conduct their substantive examination.

6. Certificate Issuance:

Simultaneously with the notification process, the International Bureau proceeds to issue the certificate of international registration. Key aspects of this certificate include:

•  Confirmation of the mark’s registration with the International Bureau.
• Inclusion of all relevant details, such as the date and number of the international registration.
• Optionally sent to the holder through the Office of Origin, based on the applicant’s preference.

The certificate serves as a crucial record, indicating that the mark has been successfully registered in the International Register.

7. Publication in Gazette:

To ensure transparency and accessibility, the international registration is published in the Gazette. This publication includes:

• Details of the mark as it appears in the international application.
• The classification symbols determined by the International Bureau.
• Indication of any seniority claims if declared.

Access to the Gazette is facilitated through tools like Madrid Monitor on WIPO’s website, allowing interested parties to review international registrations.

8. Effects of International Registration:

Upon publication, the effects of the international registration come into play:

– The protection of the mark extends to the designated members expressly indicated in the international application.

– From the date of international registration, the protection in each designated member is equivalent to a direct filing with the local office.

– If no provisional refusal is communicated within the prescribed time, or any refusal is subsequently withdrawn, protection becomes effective.

The local offices have the right to refuse protection based on their examination results, and any such refusal is communicated to the International Bureau within the specified time limits.

9. Protection in Designated Members (C):

Upon notification, designated members’ offices have the right to conduct a substantive examination of the international registration. The protection in each designated member becomes effective if:

• No provisional refusal is notified to the International Bureau within the prescribed time limit.
• Any provisional refusal notified is not regarded as such or is subsequently withdrawn.

The protection becomes equivalent to that of a locally filed or deposited trademark.

10. Date of International Registration:

The date of international registration is typically the date on which the international application was received by the Office of Origin. if the application is not received by the International Bureau within two months from the date received by the Office of Origin, the registration bears the date on which the application reached the International Bureau.

11. Record of International Registration:

A detailed record of the international registration is maintained in the International Register. This record encompasses:

• All data contained in the international application, excluding information on an invalid priority claim.
• The date and registration number of the international registration.
• Relevant classification symbols if the mark can be classified according to the Vienna Classification.
• Indications related to seniority claims, if declared.

12. Publication in Multiple Languages:

The international registration is published in the Gazette in English, French, and Spanish. This publication, available on WIPO’s website through Madrid Monitor, includes:

• The mark as it appears in the international application or received in digital format from the Office of Origin.

13. Period of Validity:

The registration of the mark is initially valid for 10 years from the date of international registration, with the option of renewal for further periods of 10 years. It is crucial for the holder to keep track of the expiration date and apply for renewal to maintain protection.

14. Examination by Designated Members 

Upon receiving the notification, designated members embark on a thorough examination of the international registration. This examination involves a detailed scrutiny of the mark, ensuring alignment with local laws and regulations.

15. Grounds for Refusal:

Designated members  retain the right to refuse protection of the mark within their territory. Grounds for refusal may include but are not limited to:

• Any provision of the Paris Convention.
• Grounds not prohibited by the Paris Convention.
•  Refusal based on local laws and practices.

It is crucial for the holder to be aware of potential grounds for refusal to navigate the registration process effectively.

15.1. Time Limits for Refusal:

Designated members adhere to specific time limits for notifying the International Bureau of provisional refusals. The default time limit is one year from the date of notification of the international registration or subsequent designation. However, designated members have the option to extend this period to 18 months through a declaration.

– Members may specify that refusals based on oppositions can be notified after the 18-month period.

15.2.. Publication of Refusal:

If a designated member  fails to issue a decision within the applicable time limit, the principle of tacit acceptance comes into play. The International Bureau will publish a statement on the Madrid Monitor indicating that the refusal period has expired, and no notification of provisional refusal has been recorded, preserving the application of Rule 5.