India: With The Madrid System – You’ve Got The Whole World In Your Hands!

Last Updated: 19 April 2013
Article by Divya Subramanian

As Indian Trademark Jurisprudence adopted the dicta of well-known trademarks, it progressed in making the world a smaller place, vis-ŕ-vis trademarks and Brand significance. India, on the prosecution front has taken yet another step to bring the globe together, by acceding to the Madrid Protocol on April 8, 2013. India is the 90th country to join the Madrid Protocol, following Colombia, Mexico, New Zealand and Philippines.

The Madrid Protocol shall come to force on July 8, 2013, three months after its instrument of accession was deposited by the Minister of Commerce and Industry at the WIPO. The instrument was deposited with the following words from the Minister:

"We recognise that this instrument will provide an opportunity for Indian companies, which are increasing their global footprint, to register trademarks in member countries of the protocol through a single application, while also allowing foreign companies a similar dispensation."

The Madrid System of trademark protection is administered by the Madrid Agreement (1891) and the Madrid Protocol (1989). The system, being administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO), shall allow a trademark owner to protect his mark in 89 countries, alongside the European Union's Community Trade Mark (CTM).

India agreed to accede to the protocol, as long back as 2007, and since then has been gearing up to keep pace with the changes that shall be brought by the system. The greatest advantage of the system is that a trademark can be protected globally by filing one application in one language and with one set of fees. Further, the system demands that the same be filed electronically.

Apart from several systemic changes at the Trade Marks Office, the legislature also will have to undergo significant amendments to incorporate the offerings of the Madrid System. The current Trade Marks Act has been amended vide the Trademarks (Amendment) Act, 2010 to incorporate Chapter IV A, namely 'Special provisions relating to protection of trademarks through international registration' and the Trademarks (Amendment) Rules, 2012 to correspondingly include Rules under Chapter IIIA.

The new system will not only allow for applications to originate from India, but will also allow the designation of India by any of the Protocol countries. As a result, the system opens the window of the Trade Marks Registry to filers across the globe, who under their international application can reach out to India, as also domestic bodies, who can reach out to the word, through a single Madrid application filed at the Indian Registry.

The Madrid System demands that constant communication between the respective Registries and the International Bureau take place. In addition, it also demands that the Indian Trade Marks Registry adhere to its strict timelines, failing which the rights of the applicants are threatened. The system demands that an eighteen (18) month timeline be adhered for concluding examination, opposition and other procedures, and requires the Registry to intimate its decision (or the pendency of any proceedings) to the IB within that time. In the event of an opposition, the Registry is required to send its provisional refusal to IB and continue with its proceedings in accordance with existing laws and rules. During the prosecution of the application the Trade Marks Registry bears the onus of intimating the IB of all facts and decisions, in the case.

Another advantage that the system offers is that there is no time limit to apply for an international application once a national application/registration is pending or granted. The international application depends on a mandatory basic national application or registration as long as it is pending and valid. However, if either the pendency or validity of such an application/registration fails before the grant of the international registration is granted, or the international application fails to proceed to grant within 5 years, the international application shall also become invalid.

It is certain that many of these changes shall pose as challenges both to the current systems of Trade Marks Practice. However, the advantages are certain to outweigh many of these challenges. The system offering accessibility through a single application for trademark protection in numerous Madrid member countries, offers wider protection resulting in speedy and cost effectiveness towards acquiring trademark registrations across the globe. It is expected that the international system shall encourage applicants of all sizes and scale to exploit the trademark system to its fullest taking the whole world in its hands!

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