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
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
"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
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
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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