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.

Trademark owners with existing Madrid Protocol applications/registrations can designate India subsequently from 8 July 2013 in order to protect their trademarks in India. A subsequent designation results in protection in India dating back to the date of making the request for designation.

After filing of such an international application, the application will be formally examined by the IB and then forwarded to the national trademark offices of the designated countries for issuance of certificate and validation. At the national trademark offices, the trademark application will enter the domestic trademark filing and registration process and will be substantively examined after which it will be accepted for registration, and published for opposition in accordance with the domestic procedure of the designated country.

A careful watch must be kept on the domestic trademark journal for the publication of Madrid Protocol applications. Oppositions need to be filed in time and prosecuted efficiently and timeously. Having filed over 11,000 oppositions, and defended over 8000, we at RKD are extremely proficient at handling oppositions and framing winning strategies to handle them not only in India but also in several countries of the world through our associates.

Ninety countries have acceded to the Madrid Protocol but several other countries are still not full-fledged members. Filing an international application either directly into the country of interest or via the Madrid Protocol is therefore a matter of strategy and it is always advisable to consult an expert attorney before embarking on this process. Where the trademark needs to be protected in a number of countries around the world, filing via the Madrid Protocol system is usually more cost effective.

For further information, please contact:

Dr Mohan Dewan at dewan@rkdewanmail.com

Advocate Dinesh Nair at ftm@rkdewanmail.com or

Advocate Rajeev M K at trademarks@rkdewan.com


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