The Transformation Route: Under Madrid Protocol

By: Surbhi Verma

Can your international trademark application be converted into a National application? This question is a subject of concern due to the threat of central attack under the Madrid system.

What is Madrid System?

The Madrid System of the International Registration of Marks is governed by the Madrid Agreement, concluded in 1891 and the Protocol relating to that Agreement, concluded in 1989. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties. This system provides a centrally administered system for obtaining a bundle of trademark registration in separate jurisdictions.

What is Transformation Route under Madrid Protocol?

The Intellectual Property Rights holders benefit from an efficient, protected and cost effective route to protect trademark globally through the Madrid Agreement or the Madrid Protocol.

For a period of five years from the date of the international registration, the protection resulting from the international registration remains dependent on the basic Application i.e. the “Home Application”.  Therefore, when a Home Application is refused/ cancelled all the International Applications will be refused/ cancelled.

Is there a way to convert a Cancelled International Application to National Application? Yes, A Transformation Application is a process to convert your cancelled international application to an national application which has to be filled in the respective country within three months from the date on which the international registration is cancelled, by the person who is the holder of the international registration, in respect of goods and services covered by the list of goods and services contained in the international registration.

Transformation may take place where the international registration has been cancelled either partially or totally in respect of goods and services at the request of office of origin. It is not available where international registration is cancelled at the request of the holder.   Therefore, Transformation can only follow through cancellation of the international registration requested by the office of origin in accordance with Article 6 (4) of the Madrid Protocol.

Comment:

The most vital advantage of Madrid Protocol is a simplified application process. Whereas, the major downside to the Madrid Protocol is that your international application is based on the basic application which can lead to the situation of Central Attack. Transformation Application is safeguard provided under the protocol to protect your trademark and convert you international application into national application but it has its own corns such as the process is expensive and there is no guarantee that these national or regional application will not be the subject of further invalidation proceedings either through opposition or lawsuits.