• Dr Mohan Dewan

 On the 8th of April 2013, the Indian Minister of Industry deposited the accession instrument of India to the Madrid Protocol. This accession will take effect from the 8th of July 2013. On or after that date, trademark owners outside India can designate India as part of an international application under the Protocol. At the same time, Indian trademark owners need to first file for or possess a registered trademark in India and thereafter they can file international registrations under the Protocol designating any of the other 89 countries who are signatories to the Madrid Protocol.

Tips for International Stake-Holders:

Foreign Nationals, whose international trademark application has been recorded and an international registration number attributed, may file a request with the International Bureau of WIPO for designating India as a country for extension of trademark protection. Thereafter, the International Bureau will forward the request for extension of protection to the Indian Trademark Office. The Indian Trademark Office will then inspect the application to check if the application meets the criteria for registration in India. If the Indian Trademark Office has any objections to the application, it will raise the same in an examination report that will be issued to the applicant. At this stage, the applicant may engage us as attorneys by executing a Power of Attorney in our favour. We will then analyze the objections raised by the Trademark Office and strive to file a suitable reply, so that the Trademark Office may waive off the objections and accept the application. Thereafter, the mark will be advertised in the official Journal, and a period of 4 months will be given to any entity to oppose the mark. In case the mark is opposed, we at RKD, having defended over 8000 oppositions, will devise a strategy to proficiently handle the matter so that the application proceeds to the final stage of Registration. As Per the Madrid System, in case no oppositions are raised, the application will be accepted and granted registration within a period of 18 months.

Advantages of the System:

  • The accession would make it possible to obtain speedy registration of Indian trademarks in different countries worldwide. Existing trademark holders whose trademarks are pending registration in India can also use the Madrid Protocol to extend the protection to other member countries.
  • International stakeholders will now be able to extend protection of their trademarks to India by using this system.
  • Since an international registration is equivalent to a bundle of national registrations, the subsequent management of that protection is made much easier.
  • An applicant, after registering the mark, or filing an application for registration, with the Office of origin, merely has to file one application, in one language, and pay one fee instead of filing separately in the Trademark Offices of the various Contracting Parties in different languages and paying a separate fee in each Office.
  • In case an applicant wishes to record changes subsequent to registration, such as a change in the name or address, or a change in ownership, he may have the change recorded with effect for several designated Contracting Parties through a single simple procedural step and the payment of a single fee. Additionally, there is only one expiry date and only one registration to renew.
  • A unique feature of the system is that protection may be extended to nations that subsequently join the Madrid System.

Implementation of the Madrid System in the India will definitely be beneficial to trademark applicants the world over; however effective utilization of this system will inevitably require efficacious and timely management of trademark applications owing to the stringent timelines.

Ninety countries have acceded to the Madrid Protocol but several other countries are still not full-fledged members. Although there are distinct advantages of the Madrid Protocol, a careful thought must be applied before using the Protocol. In certain cases, it may be advantageous to file a national application particularly because the designated office is required to complete all procedures in 18 months and if the matter gets complicated, they may tend to issue a refusal order. Filing an international application either directly into the country of interest or via the Madrid Protocol is therefore a matter of strategy and formulating strategies that spell success is our forte.


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