Module 6

MODULE 6

MADRID FILING

6.1 INTRODUCTION

The system of international registration of marks is governed by two treaties - the
Madrid Agreement which came in the year 1891 and the Madrid Protocol which came
in the year 1989. The Madrid System came in the year 1891. India is a signatory to the
Madrid Agreement. The Madrid system talks about international registration. A
proprietor can apply for international registration, the most important requirement
being that the trademark should be registered in the origin country.

The Madrid Agreement was revised at Brussels (1900), Washington (1911), The Hague
(1925), London (1934), Nice (1957) and Stockholm (1967) and amended in 1979. The
Madrid Protocol is just an amendment to the Madrid Agreement. When globalization
emerged, the Madrid Agreement was found to be lacking to deal with certain
perspectives. It was amended and the Madrid Protocol was introduced. Both the
instruments are currently in existence.

An application for international registration may be filed only by a natural person or
any legal entity having any proximity, through establishment, domicile or nationality,
with a Contracting Party to the Agreement or the Protocol. A mark may be the subject
of an international application only if it has already been registered with the Trademark
Office (referred to as the Office of Origin) of the Contracting Party with which the
applicant has the necessary connections. However, where all the designations are
effected under the Protocol, the international application may be based on a mere
application for registration filed with the Office of Origin. An international application
must be presented to the International Bureau of WIPO through the intermediary of the
Office of Origin.

6.2 ADVANTAGES OF THE MADRID SYSTEM

The main advantage of the Madrid system is that it has made the registration process
simpler. The other advantages are as follows:

1. The cost is reduced.

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2. Only one application is required for registration.
3. One standard language is selected along with a single document.
4. Time is reduced as it is not a long process anymore.
5. One standard currency is also selected.

6.3 DISADVANTAGES OF THE MADRID SYSTEM

1. Increase workload on the national office.
2. Inexperience of a local attorney i.e. filing in WIPO is done by a local attorney on

the applicant’s behalf.
3. Domestic delays.
4. Language barrier as only English and French are used in WIPO.

6.4 PROCESS OF INTERNATIONAL REGISTRATION OF TRADEMARK

1. The request application is filed in the office of the trademark i.e. origin office.
2. The trademark officer sends the request application to WIPO.
3. It goes through the procedure of examination. Evidence is collected to check

whether the trademark is issued to any other party or not.
4. After all the enquiry and examination, WIPO enters the request application in its

register.
5. WIPO has its own international official gazette i.e. the WIPO gazette.It publishes

the application in the gazette.
6. If any person has any objection, then that person has to respond to the application

within six months.
7. If no objection is made, then the trademark is issued within one year. The validity

of the trademark is for ten years.
8. If international registration is given on a trademark, then the Registrar of trademark

of that origin country has to record the same in its register also.

6.4.1 Contents of the international application:

The international application form (MM2) must contain:1

1 ‘The Madrid Protocol: A Route to Global Branding’ (January 2018) Intellectual Property India.
Available at
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● Name and address of party.
● The reproduction of your mark, which must be identical to your basic mark in India.
● A list of the goods and services for which protection is sought, which must be fully

covered by those indicated in your basic mark.
● The 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:

● An indication of your entitlement to file (establishment or domicile in India or
Indian nationality).

● Trade mark priority claim, if applicable.
● Name and address of the representative, if appointed.
● Number and date of your basic mark at the India Trade Marks Registry.
● Indications of the mark (kind of mark, color claim if applicable).
● Description of the mark, if required.
● Transliteration of the mark, if applicable.
● Amount of the fees being paid and method of payment.

6.4.2 Evolution of trademark:

The modern world is a world of the internet. There are certain rules and laws to protect
the rights of people against cyber crime, piracy and various other crimes related to the
internet.

One of the rights related to the internet is the right of using a website name i.e. right
against domain names which are registered by a juristic person, whether a company or
a natural born person. The person who is having a registered domain name has an
exclusive right over it and against the persons who try to deceive the public by creating
a similar domain name.

<http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_93_1_THE_MADRID_PRO
TOCOL.pdf>
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6.4.3 Cyber-squatting

Cybersquatting is also known as domain squatting. It refers to the registration,
trafficking or using a domain name with the mala fide intention to gain profit from
someone else’s goodwill or from the trademark which is already registered by the other
person. The cyber squatters then charge an escalated price in order to sell the domain
to a person who owns a trademark. The term squatting refers to the act of occupying an
abandoned or unoccupied space or building that the squatter does not own. Similarly,
in cybersquatting also, the squatter is not the real owner of the domain name. He
deceptively uses the domain name of a registered user.

6.4.3.1 Categories of cyber squatting

There are various types of cybersquatting and the most common of them is
typosquatting. Here, the squatter relies on the fact that users will make typographical
errors while surfing the internet and entering the domain names into a web browser.
Various categories of cyber squatting are as follows:
● the omission of “dot” in the domain name
● a common misspelling of the intended site
● a differently phased domain name
● a different top level domain.

The Internet Corporation for Assigned Names and Numbers (ICANN) is the
administrative authority that regulates and administers the domain name system. It is a
private organization that manages and coordinates the domain name system by
overseeing the distribution of unique IP addresses and domain names. These
organizations or administrative bodies were required as it was seen that the disputes
filed with the World Intellectual Property Organization (WIPO) considerably increased
every year.

The ICANN implemented the Uniform Domain Name Dispute Resolution Policy
(UDRP) in 1999, which has been used to resolve more than 20,000 disputes over the
rights of domain names. In 2010, only almost 2700 cyber squatting cases were filed
with the WIPO Arbitration and Mediation Centre under this policy involving 4370

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domain names across 57 countries.2 The UDRP proceedings are conducted by the
ICANN approved service providers. At present, there are four dispute resolution service
providers:
● World Intellectual Property Organization (WIPO)
● National Arbitration Forum (NAF)
● Asian Domain Name Dispute Resolution Centre (ADCNRC)
● Czech Arbitration Court (CAC).

The rules of UDRP are followed by each provider. They also follow their supplement
rules. While deciding any particular matter, neutral persons are selected from panels
established for that very purpose. The procedure takes almost 45 days of and costs
around $1000 which is to be paid to the entities providing neutral persons. This
payment is mostly done online.

6.4.3.2 Cybersquatting test

There are essentially three elements that are considered to carry out an analysis:
1. Whether the domain name is identical or deceptively similar in nature or which

creates confusion in the minds of user;
2. Where there are no legitimate interests or rights in respect of the domain name;
3. If the domain name is being used with mala fide intention and if the domain name

is already registered.

Rule 4(a), as formulated by the UDRP, mentions the above mentioned points. Rule 4(b)
describes the evidence of registration and bad faith use.3

6.4.3.3 Effects of cyber squatting in India

Presently, there is no specific statute which talks about cyber squatting. There are
legislations to protect the rights of the registered user of a trademark and copyright. The
Trade Marks Act, 1999 is used for protecting the trademark in domain names and hence,
it does not have the provisions to protect the owner of domain names from cyber

2 ‘WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP)’ WIPO (5 November
2018) available at <http://www.wipo.int/amc/en/domains/guide/>
3 Available at <https://www.icann.org/resources/pages/policy-2012-02-25-en>
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squatters. Indian courts have relied on the definition of cybersquatting given by the
Delhi High Court which defines it as “an act of obtaining fraudulent registration with
intent to sell the domain name to the lawful owner of the name at a premium”.4

It is pertinent to note that Information Technology Act, 2000 does not deal with domain
name disputes. Indian courts rely on the rules of passing off in respect of such disputes.
Therefore, in the absence of any such provision, courts in India have been following
the principle of passing off and the guidelines and policies of the WIPO and the UDRP.

6.4.4.4 Significant case studies

The first cyber squatting case involved the World Wrestling Federation (WWF). It was
decided by WIPO under the UDRP. In this case, a US-based wrestling federation filed
a suit for infringement of rights as a resident of California, registered the domain name
“worldwrestlingfederation.com” and later offered to sell it to WWF at a very high price.
The WWF claimed that the domain name was registered with a mala fide intention and
constituted a violation of WWF’s trademark. It was held that the domain name was
deceptively similar and could cause confusion in the minds of users. It was similar to
WWF’s trademark and the respondent did not have a legitimate right over that domain
name.

The first case in India with regard to cyber squatting was Yahoo Inc. vs Aakash Arora.5
In this case, the plaintiff filed a complaint against the defendant as the latter was using
the domain name which was identical and similar to the plaintiff’s well known website.
The court ruled in favor of the plaintiff that the respondent was trying to use the fame
of the plaintiff's renowned domain name in order to gain profits and was liable for
infringement of trademark.

In Rediff Communication vs. Cyberbooth & Anr,6 the Bombay High Court held that
domain name is like a corporate asset of a company. In this case, the plaintiff filed a
case against the defendant as the defendant was using the same domain name as the

4 Manish Vij vs. Indra Chugh And Ors., AIR 2002 Del 243.
5Yahoo Inc. vs Aakash Arora, 1999 IIAD Delhi 229, 78 (1999) DLT 285.
6 AIR 2000 Bombay 27.
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plaintiff. The court ruled in favor of the plaintiff. In Satyam Infoway Ltd. vs. Sifynet
Solutions7 the Supreme Court held that the plaintiff had an image in the market and had
registered the name Sifynet and various other names with the ICANN and WIPO. The
defendant could not use the same word as the plaintiff was the registered user of that
domain name. The court held that domain names were business identifiers, serving to
identify and distinguish the business itself.
In India, since there is no specific law on cyber squatting, the cases are decided within
the ambit of trademark laws by interpreting the principle of passing off with regard to
domain names.
6.4.4.5 Indian domain name dispute resolution policy:
“.in” is India’s Top Level Domain (TLD) on the internet. The IN registry has published
the IN Dispute Resolution Policy (INDRP) which is a mandatory dispute resolution
procedure. India is not subscribed to the UDRP. The INDRP has been formulated on
the lines of the UDRP, internationally accepted guidelines and with the relevant
provisions of the Indian IT Act 2000.

7 AIR 2004 SC 3540.
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6.5 THE MADRID FORM8

8 Available at <https://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm2-
editable1.pdf>
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