Filing of FORM MM2 for International Trade Mark Registration : Frequently Asked Questions

This comprehensive guide covers the essential information and procedures for filing Form MM2 for international trademark registration.

1. What are the provisions relating to the protection of trademarks through international registration under the Trademark Act of 1999?

India joined the Madrid Protocol on July 8, 2013. With the Madrid Protocol, applications for international trademark registration from India can now be submitted with ease. A new chapter, Chapter IV A, was added, addressing the legal and administrative requirements for foreign trademark registration. Sections 36A through 36G of the Trademark Act of 1999 were included.

These sections contain the rules pertaining to international registration under the Madrid Protocol. The national registry shall examine the mark within eighteen months of receiving the notification from the international bureau and take appropriate action, either accepting or refusing the application, and further appraising the international bureau.

2. What is Form MM2?

Form MM2 is an application form used for the filing International Trademark Applications, governed exclusively under the Madrid System. By filling out Form MM2, one can protect their mark in multiple countries or regions simultaneously under the Madrid Protocol.

3. Who can fill out Form MM2?

Anyone can file Form MM2 for international trademark protection if they are nationals of, or have a domicile or business in, any member country under the Madrid Protocol. The IP office of that member nation will be the “office of origin.” Before filing Form MM2, one must register or apply for a national trademark (also known as Basic Application/ Registration) through their home IP office.

4. What is the language of the application?

The application may be in English, French, or Spanish, according to what is prescribed by the office of origin. The office of origin can restrict the choice of the applicant to just one or two languages, or permit the applicant to choose any of the three languages.

5. How to fill out Form MM2?

Form MM2 can be filled out using WIPO’s Madrid System according to the requirements and procedures established by the Madrid Protocol or through the Indian Trademark Registry’s E filing option under the IAOI (International Application Originating from India) Category.

6. What information is required while filling out Form MM2?

There are 13 items in the form that need to be filled by the applicant or their representative (authorized by the applicant):

– Item 1: Name of the office of origin

– Item 2: Details of the applicant

– Item 3: Entitlement of the applicant to file

– Item 4: Appointment of a representative

– Item 5: Particulars of basic application or basic registration to be attached

– Item 6: Claim of priority of the earlier filing to be mentioned

– Item 7: Details of the mark (description and representation of the mark)

– Item 8: Color(s) (if claimed as a distinctive feature of the mark)

– Item 9: Miscellaneous indications (transliteration, translation, description of the mark)

– Item 10: Class of goods and services to be covered by the international registration

– Item 11: Designations where the mark has to be protected (*Note: If the EU is designated, it is compulsory to indicate a second language and attach Form MM17. If the USA is designated, it is compulsory to attach Form MM18.)

– Item 12: Signature of the applicant or representative

– Item 13: Certification and signature of the international application by the office of origin

7. What particulars of a basic registration or application are needed under Item 5?

If the basic mark is registered in the office of origin, its registration number and date of registration must be indicated. If the basic mark is an application rather than a registration, its application number and date should be indicated.

Note: that if the international application is based on a basic registration, the particulars of the application that led to that registration need not be indicated.

8. How can priority be claimed under Item 6?

To claim priority, the box in Item 6 should be checked by the applicant. The applicant should then indicate the name of the office with which the earlier filing was made, along with the date of the earlier filing to establish the validity of the claim by virtue of the non-expiry of the six-month period. If the number of the earlier filing is available, it should also be indicated.

9. How to file a priority claim in a single international application incorporating all the goods and services in a single international registration?

In such a case, the details of each earlier filing should be indicated. If there is not sufficient space, the necessary indications should be given on a separate continuation page, with the earliest date indicated in Item 6. The applicant should also check the box indicating that more than one priority is being claimed.

10. What to do if not all the goods and services are covered by the priority claim?

If not all goods and services are covered by the priority claim, the applicant must indicate in Item 6 the particular goods and services that are covered. If those goods or services correspond to all the goods or services specified in a given class in the international application form, it is sufficient to state, for example, “All goods in classes 9 and 12.”

11. How to claim color as a distinctive feature of the mark under Item 8?

If color is claimed, the box in Item 8(a) should be checked to indicate that color is a distinctive feature of the mark, and the applicant should specify the color(s) claimed. In Item 8(b), the applicant can further specify the principal parts of the mark that are in the color(s) concerned, which is required in certain designated Contracting Parties.

12. What happens if the mark contained in the application is a color mark but the applicant does not claim color as a distinctive feature of the mark under Item 8?

If a claim of color as a distinctive feature is not made, the International Bureau will still publish the mark in the color submitted in the international application, corresponding to the basic mark.

13. How are goods and services indicated under Item 10?

Goods and services must be grouped in the appropriate classes of the International Classification of Goods and Services (Nice Classification), each group being preceded by the class number and presented in order. Goods and services should be indicated in precise terms, preferably using words from the Alphabetical List of the Nice Classification. If necessary, a continuation sheet should be used, and the appropriate box should be checked.

14. Which designated contracting parties under Item 11 require extra procedures to follow?

Particular attention should be paid to designations of Contracting Parties like the European Union, the United States of America, Ireland, Singapore, the United Kingdom, Cuba, Ghana, and Japan. Note: when the designated contracting party is the EU, Form MM17 should be attached to claim seniority, and when the designated party is the USA, Form MM18 must be attached with Form MM2.

15. What if there are several applicants?

If there are several applicants, a continuation sheet provided in Form MM2 should be filled with the details of all applicants.

16. What is the fee for international registration?

The fees include a basic fee of 653 Swiss francs if the mark is in black and white and 903 Swiss francs if the mark is in color. For applicants from Least Developed Countries (as per the United Nations list), the fee is 65 Swiss francs for black and white and 90 Swiss francs for color representations. Additionally, there is a standard fee of 100 Swiss francs for each designated Contracting Party (complementary fee) and 100 Swiss francs for each class of goods and services after the first three (supplementary fee).

17. How is the fee calculated?

It is recommended to use the electronic fee calculator available on the Madrid System website at: [WIPO Fee Calculator] http://www.wipo.int/madrid/en/fees/calculator.jsp .

18. What is the method of payment?

There are 4 methods of payment:

1. Online payment, by credit card or by debiting a sufficiently credited current account opened with WIPO, at https://webaccess.wipo.int/epayment/ using the Reference No. generated upon filing an International Trademark Application ;
2. By transfer to WIPO’s bank account: IBAN No. CH51 0483 5048 7080 8100 0, SWIFT code CRESCH ZZ80A, Crédit Suisse, CH-1211 Geneva 70;
3. By transfer to WIPO’s postal account: IBAN No. CH03 0900 0000 1200 5000 8, SWIFT/BIC: POFICHBE;
4. By authorizing the International Bureau to debit the required amount from a sufficiently credited account opened with WIPO.