Some of the important agreements relevant to Trademarks are highlighted below:
The Madrid Agreement was adopted on April 14, 1891 to facilitate protection of a trademark or service mark in several countries by means of a single international registration. As on July 15, 1999, 54 countries are party to this Agreement mainly belonging to Europe, countries of Africa and four countries in the Far East namely, China, the Democratic People’s Republic of Korea, Mongolia and Vietnam. The United Kingdom, the United States of America, most Latin American countries, Japan and India are not signatories to this agreement. The Agreement covers both trademarks and service marks.
Important features of the Madrid Agreement are as follows:
- An applicant must be a national of a member country. A person having his domicile or a real and effective industrial or commercial interest in such a country is also eligible. It may be noted that this would be governed by the national laws of the country in question:
- A mark to be registered in member states should be first registered at the national level in the country of origin of the applicant. The first registration is called ‘basic registration’.
- The country, having given the basic registration, can only transmit their quest for international filing to the International Bureau of the World Intellectual Property Organization (WI PO), along with the list of the countries in which protection is being sought. There ‘is no provision for directly filing a request under the Agreement.
- It must be noted that the country of origin has to be a member state. The role of the office of the country of origin is not only to send the application for international registration but also to certify that the mark which is the subject of the international registration is the same mark which is the subject of the basic registration.
- For each application, fees have to be paid for each designated country and WIPO. The fees, paid for the designated countries, are called the ‘complementary fee’.
- The International Bureau notifies the international registration to the offices of the designated countries and publishes it in a monthly periodical called ‘The WIPO Gazette of International Marks’.
- If the basic registration is cancelled for some reasons in the country of origin, during the first five years, the international registration automatically stands cancelled in all the designated countries. This also gives an advantage to a person to oppose the registration of a mark only in the country of origin and that person need not oppose it in all the designated countries. This possibility of challenging an international registration through a national registration is referred to as ‘Central Attack’ feature of the Agreement.
The Madrid Protocol
The Protocol, relating to the Madrid Agreement concerning the International Registration of Marks was adopted at Madrid on June 27, 1989. The Protocol, which entered into force on December 1, 1995, retains the basic features of the Madrid Agreement. As on July 15, 1999, 39 countries have acceded to the Protocol. The Protocol was formed to remove some of the features of the Madrid Agreement, which posed some obstacles to accession by several countries. These features are:
- For an international registration of trademark, it is essential to first register a mark at the national level. The time required for obtaining a mark at the national level varies from country to country. Hence, some parties do suffer.
- Within one year, a designated member country has to examine and issue a notice of refusal by giving all the grounds for refusal. The period was considered short.
- A uniform fee is paid for the designation of a member country. This was found to be inappropriate for countries with high level of national fees.
- International registration is linked to the basic registration during the initial five years and the former gets cancelled if latter is cancelled. The fact that grounds under which a mark is cancelled in the country of origin need not necessarily exist in every other designated country is overlooked.
- The only working language of the Madrid Agreement is French.
Innovations, introduced by the Madrid Protocol are:
- An international application need not necessarily be based on a registration made by the Office of Origin but can also be based on an application filed with the Office of Origin. This makes it convenient for countries with full examination system where the national registration takes time. It also makes it possible to claim the right of priority of six months under the Paris Convention.
- A Contracting Party can receive the fee under the existing Madrid Treaty system through its share in the international fees collected: for each designation made as in the Madrid Treaty. Alternatively, the member country can choose “Individual fee” system for each designation made, which should be an amount not more than the national fee for a ten-year registration. The “Individual fee” system makes an attractive proposition for countries with high level of national fees.
- It is possible to transform an international registration into national or regional application in the designated Contracting Parties, if the basic registration is cancelled for some reasons, as in the case of “Central Attack”.
- An applicant may choose to base an international registration in any of the Contracting States with which he has connection through nationality, domicile or establishment..
The Madrid System: International Registration of Trademarks
- Obtaining an international trademark from the Madrid System - First, it is important to understand the international system for the registration of trademarks works. Somebody files an international application with the International Bureau of WIPO in Geneva, and in it they designate the countries that are party to the treaties in which they want the mark to be protected. WIPO register the mark and then pass it on to the countries that have been designated, which then have the possibility of refusing protection. They would normally examine it as though it were an application filed with them directly and apply their normal national criteria accordingly. If they refuse it, the refusal is notified to WIPO and entered against the mark for that country in the International Register. Thus, this way a person can secure international registration. However, whether or not it is protected in a given country is determined by that country.
- Applicant files for International
- Registration with the International
- Bureau of WIPO in Geneva
- Designates the countries in which they seek to protect it
- The International Bureau registers the trademark and;
- Transmits to the designated countries
- Individual Designated countries may refuse protection if the mark is not; acceptable under their law. That is, they may carry out an examination for such things as distinctiveness, deceptiveness and / or conflicts with existing trademarks.
- Decision communicated International Bureau
Role of the International Bureau of WIPO.
The International Bureau has the role of receiving international applications and then passing them on to the designated countries. Does it actually do any examination of the trademarks?
The International Bureau of WIPO doesn”t examine as to substance. But there are basically two substantive questions, which are investigated by national offices. One is whether the mark is capable of functioning as a trademark, in other words whether it is capable of distinguishing goods and services, and the other is whether it conflicts with a mark already protected in someone else’s name. And countries do actually differ very much in their approach to this examination. Some conduct a full examination and some do not. The International Bureau doesn”t do any examination of these substantive aspects, but rather leaves them entirely to the laws of the countries concerned. It does, however, examine first of all whether the application complies with the formal requirements set forth in the treaties and regulations, mainly to make sure that the necessary elements of a trademark application are there. It also carries out an examination of the lists of protected goods and services that has to accompany any trademark application. Those goods and services should be classified according to an international classification, known as the Nice Classification, and the International Bureau has general responsibility for the consistent application of the Classification. So, the International Bureau does conduct an examination as to form and an examination of the classification of goods and services, which means that those tasks do not have to be carried out by the Receiving Offices, because they know that they are receiving properly filed and properly classified applications. So the role of the International Bureau of WIPO is to receive applications for the protection of trademarks in a number of designated countries. WIPO checks to see if the application has been made in a correct manner and, if so, registers the mark, and forwards it to the designated countries. Examination as to substance may be done in the designated countries if their laws so prescribe.
Under the Madrid system, is it necessary for a person to register his trademark in, his home country before he can file an international application?
Yes, this is a fundamental requirement of the international system of registration. When the system started, over a hundred years ago, it was really intended to be a means of extending the protection provided by a domestic registration to the other countries of the Madrid Union. The system has become rather more sophisticated and more complex since then, but the principle continues that you must in the first instance, either have a registration in your country of origin or, if the international application is made exclusively under the Protocol, at least have filed an application for registration in your home country.
You use the international system by applying for a Madrid registration, but after you have filed your international application, the national one is refused. What happens in that situation?
If the national application is refused, that will of course have the corresponding effect on the international registration. There is a dependent relationship between the national protection and the international protection for a period of five years. But, in the case that you mention, where the national application is refused, presumably very soon after the international registration is applied for and therefore, within the five-year period, this would result in the international registration being cancelled. If the refusal at the national level is only partial, then the cancellation would be correspondingly partial.
You have registered a trademark in your home country and then obtained an international registration, having effect in a series of other countries. One year after filing your international application, you learn that your home country has cancelled the registration of your trademark. Do you still have protection in Kenya via the Madrid system?
No, if the basic registration ceases to exist for any reason (cancellation ex officio, or at the request of a third party, or non-renewal) during the first five years of the lifetime of the international registration, this effect leads through to the international registration. This is also the case where the international registration was based on an application in the home country and that application is refused within that period. However, after the expiry of this five-year period, the international registration becomes independent of the trademark in the home country, and continues to be effective even if the home country registration is cancelled.
For how long can you protect a trademark?
You can actually protect it indefinitely, but in the international system and indeed in national systems too, you have to renew it from time to time. An international registration is renewed by paying the fees again every ten years. Ten years is becoming a standard term at the national level, but, there is no limit to the number of times that it can be renewed.
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