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Trademark law newsflash
Article | 31/05/13 | 3 min. |
India’s accession to the international trademark system: a major milestone in the transformation of the Madrid system
Following the accession of Columbia and New Zealand last year and of Mexico at the beginning of this year, the Indian Minister for Commerce and Industry, Mr. Anand Sharma, presented last month his country’s instrument of accession to the Madrid Protocol regarding the international trademark registration, therefore bringing to 90 the total number of members of the international trademark system. The treaty will enter into force with respect to India on July 8, 2013.
Such accession signals the entry of this new dynamic emerging country in the system established by the Madrid Protocol, therefore enabling national or regional brand owners, as of July 8, 2013, to designate India by means of an international trademark registration application.
India’s accession, which transforms the Madrid system into a system with truly global reach, is a good opportunity to deal with the issue of the international trademark registration mechanism.
How does one file an international trademark application?
The international filing system established by the 1891 Madrid Agreement and by the Protocol relating thereto is simple and financially attractive, rendering the protection and management of trademarks rational at the international level.
Indeed, the Madrid system enables the owner of a national or regional brand which is attached to one of the signatory countries of the Madrid Agreement or Protocol to obtain international protection, by means of a single filing application, before a single office, in a single language, by making a single payment in a single currency (Swiss Franc).
It should be noted that the system established by the Madrid Agreement does not grant an international unitary trademark. Indeed, if the international filing application is centralized, it does however produce the same effects as a registration application for a trademark filed in each of the countries designated by the applicant. Therefore, the centralized filing application with the World Intellectual Property Organization (WIPO) enables the filing process to be set off with all the national trademark offices referred to in the international registration application.
Each national trademark office remains independent and free to oppose a registration application. As an international trademark is not a unitary trademark, a registration opposition in a country will not result in the cancelation of applications in the other designated countries.
Yet, as mentioned above, the filing of an international trademark cannot be an initial filing: it is a filing application claiming priority. As a consequence, the applicant must file the application beforehand or have already obtained the registration of a national or regional trademark (for example, an EU trademark can be used as a basic trademark to proceed with an international trademark application).
As such, it is essential that the applicant be certain of the validity of its initial trademark (the basic trademark), insofar as an international trademark remains closely tied to the basic national trademark during the first five years following the filing with the WIPO. Indeed, through the mechanism known as the mechanism of “central attack”, any substantial infringement to the basic trademark will have direct repercussions on the international trademark. For example, the invalidation of the basic trademark will give rise, during such five-year period, to the invalidity of the international trademark. Therefore, ensuring the validity of the basic trademark is not a precaution that can be ignored.
Once this precaution taken, the Madrid system is an efficient and financially advantageous tool for managing its trademarks at the international level, and even more so as it will now be possible to designate India.
Véronique Dahan, Counsel