India: India’s Accession To Madrid Protocol: Bless Or Mess!

Last Updated: 12 July 2013
Article by PSA


In a significant development, India has joined the Madrid Protocol and with India's accession the purpose of transforming the Madrid Protocol into a system with truly global reach is another step closer. This treaty will come into force in India from this month (July 2013) and would provide a unique opportunity to all domestic companies and entrepreneurs to protect their trade mark portfolio across the world by obtaining a cost-effective global trade mark registration. Also, it would give an opportunity to the brand owners across the world to extend their protection to the important Indian market through a single, simplified and cost-effective procedure.

The Madrid Protocol is equally important for large as well as small or mid-size businesses present in any place in the world. In this bulletin we will discuss the implications of India's accession to Madrid Protocol and some suggestions for the Indian as well as foreign brand owners.

1. International IP Regime

The international trade mark system is governed by the Madrid Agreement concerning the International Registration of Marks (1891) and the Madrid Protocol relating to the Madrid Agreement concerning the International Registration of Marks (1989). This Protocol is administered by WIPO. WIPO works with its member states to improve understanding and respect for IP worldwide. It provides economic analysis and statistics and contributes IP-based solutions to help tackle global challenges. India has joined Madrid Protocol but not the Agreement. The most important advantage of the Protocol is the ability to file an international application on the basis of a pending application in a member state instead of a registered trade mark as required under the Agreement. Also, Protocol provides for a mechanism to apply for transformation of a failed international registration into regional or national applications while retaining the priority date of the original international registration.

The Madrid Protocol offers trade mark owners a cost effective and use friendly means of protecting and managing the trade marks internationally. It allows brand owners to register their trade marks in all the member countries through a single application filed in English, French or Spanish. The applicable fees is payable in Swiss francs. So far, there are 88 member countries in addition to the European Union. India is the 14th of the G-20 economies to join the Protocol. Brand owners have to apply for trade mark protection in a national or regional trade mark office having jurisdiction before seeking international protection. An international registration under this Protocol produces the same effects as an application for registration of the trade mark in each of the contracting parties designated by the applicant.

In India, the Trade Marks Registry was established in 1940 and it administers the Trade Marks Act, 1999 and the Trade Marks Rules, 2002. The Department of Industrial Policy and Promotion is concerned with legislations relating to patents, trade marks, designs and geographical indications. These are administered through the offices of the Controller General of Patents, Designs and Trade Marks.

2. Procedure under the Madrid Protocol

An international application is made to the national office and from the list of the member countries applicant has to select wherever it seeks protection of its trade mark. The origin office then examines whether the international application corresponds to a mandatory basic application or basic registration and complies with home state requirements.

The office of the applicant should certify that under Article 3 (1) of the Protocol, the mark is the same mark as that in the basic registration. The application from the originating office should be received by the International Bureau within two months of that initial date of receipt of the application (Article 3 (4) of the Protocol). The International Bureau examines the application, the indication of goods and services and their classification, required fee payment and other basic administrative requirement and confirms the irregularities back to the original office, which must be removed within three months. If that is not done, the application is considered abandoned. On successful examination the International Bureau then records the mark in its register. The mark is then published in international gazette and notified to all member countries seeking their consequent approval and granting of registration.

If grounds for objection are found during the ex officio examination, or in case an opposition is filed, a provisional refusal is declared within 18 months of receipt of the application from the International Bureau. Such refusal by the national office based on oppositions can be made after the 18 month time limit is passed from the receipt of the notification. All post refusal procedure of review, appeal and response is done directly between the mark holder and the concerned office. Finally, a statement is sent to the International Bureau indicating that the provisional refusal is either confirmed or is totally withdrawn or partially withdrawn. This statement is also recorded in the International Register and published in the gazette. If no further objection is received within 12-18 months, it is deemed accepted. The duration of protection is ten years and can be renewed.

3. Advantages of the Madrid Protocol

The Indian and even foreign businesses will have the following advantages from the accession of India to the Madrid Protocol:

(a) Convenience and cost: Protocol enables an Indian to extend protection for a trade mark in one or more member countries by electronically filing an international application designating member countries where trademark protection is sought with the Indian Trade Marks Registry. An international applicant may designate India and claim trade mark protection in India. The advantage is convenience and cost-efficiency of paying one time fee and using one trade mark registration as the basis for registration in many different countries.

(b) No requirement of engaging separate counsels in different countries: The Protocol does not require applicants to retain separate local trade mark counsel in each country in which it wishes to file a trade mark application, unless the national trade mark office issues a rejection or requires additional information.

(c) Swifter process: The mechanism under the Protocol is swifter. In the prosecution process, the amount of time an office has to act once it has received a request for extension of an international registration is limited, which ensures timely address.

(d) Single document to change application/applicant's details: Even changing any details of the application or of brand owner (name, address, etc) can be reflected through one single document. This is filed at the International Bureau and no separate steps are required to be taken at each national office.

(e) Fees: The filing and maintenance fees associated with the international registration are lower over time than maintaining several separate national registrations.

Now the question that arises is whether India is prepared to deal with the international applications that will start pouring in after the Protocol comes into effect. Review of the existing system suggests that the Registry in India lacks man power. As the Protocol mandates that the international application has to be processed within 18 months, the fear is that the Registry will start giving prominence to the international application against the Indian applications. This will add to the delays in Indian application registrations. Indian laws allow broad specification of goods and services and this may not be similar in other member countries.

It is crucial to note that an international registration would depend on the basic mark for the first five years. So, if an Indian basic mark is limited or cancelled, the international registration would similarly be limited or cancelled. After the expiry of this five year period, the international registration would become independent. The refusal on relative grounds and oppositions due to the large number of applications already registered or in process in India would also be relatively high. International applicants need to be very cautious before selecting any trade mark and taking the route provided by the Protocol.

In light of the above, it is crucial that Indian Registry should also prepare itself by firstly updating the official website with complete online facility not only for search, which it already has but also for filings of applications, responses and procuring of online registration certificates. Making all the previous journals and records online would be another crucial step that should be done. Though Registry has already been uploading the new journals, it would be crucial to identify the missing ones and complete the archive. More online dependency will of course necessitate more IT-trained staff in the Registry. The Indian Trade Marks Journal can also have a special issue dealing with Indian marks that should be made available in the Gazette of the International Bureau so engaging internationally savvy trade mark agents can be avoided and thus, the time and cost involved can be reduced by the Indian applicants.

The Protocol comes with a lot of possibilities, but only time will tell whether its effective and efficient implementation will bear fruits or will create menace for the applicants. Now is the wait and watch situation.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions