India: Madrid Protocol In India: Pros And Cons

Last Updated: 2 August 2016
Article by Intepat Team

As we all know the Madrid System functions under the Madrid Agreement (1891) and the Madrid Protocol (1989). It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. The system was basically introduced to provide convenience in the system of registration of marks. Every region has a different system for registration of trademarks.

A person to protect his trademark had to get his mark registered in the country where he wants to protect it. But a trademark granted by a particular country served to protect the interest of the proprietor only in that country and any person who wanted to protect his trademark internationally was thus required to file for trademark registration in each individual country where such protection was sought. This created a lot of chaos like the multiplicity of applications and inconvenience to the potential applicant and also increased the costs for him. The Madrid system was a one stop solution for all such problems.

The Madrid system enables the registration of trademarks in multiple jurisdictions worldwide that are part of Madrid Union's member countries by filing a single application in the Applicant's national trademark office or regional trademark office. India was not a member of the Madrid system earlier. But soon it realized its advantages and decided to become one of its signatories. India joined the Madrid protocol with effect from July 8, 2013. Applications using the Madrid system can now be filed from India.

When India became a member of the Madrid protocol, certain amendments had to be made to the Indian Trademarks Law to comply with the Madrid system. The Trade Marks (Amendment) Act, 2010 was passed on 21st September 2010 to bring into force the Madrid Protocol in India. The amendment led to the inclusion of Chapter IVA (containing sections 36A to 36G) in the Trademarks Act 1999. This chapter specifically focuses on the "Special Provisions relating to Protection of Trademarks through international registration under the Madrid Protocol." The Madrid system has not only eased the procedure of applying for the trademark but also simplified its subsequent management. Now applicants can designate India and get trademark protection or get "international registration" in India based on a 'basic application' or 'basic registration' in a Protocol member country.

Advantages: Madrid protocol in India

  1. It has a centralized trade mark application process by which a person can get protection worldwide through a single application and a single set of fees.
  2. It is a more convenient and cost effective method.
  3. It prevents the multiplicity of applications.
  4. The Protocol Applications may be in French, English or Spanish (which is obviously an advantage in non-French speaking jurisdictions like India.
  5. The process is less time consuming.
  6. Any change in the details of the right holder (Eg. name, address etc) can be changed by sending one single document to the International bureau and no efforts have to be made at every national office.
  7. Under the Madrid Protocol, it is pretty easy to add and subsequently designate the member country at a later date under the same International registration. The filing and maintenance fees associated with the international registration are lower over time than maintaining several separate national registrations.

Though there are a lot of advantages to the Madrid protocol in India, it has a few disadvantages as well. The following are some of them.

Disadvantages: Madrid Protocol in India

  1. The international registration can extend only to Protocol territories.
  2. The Indian Trademarks registry has not been able to entertain the national filings because of the lack of manpower. Now that India has adopted the Madrid system, it would be even more difficult to look into both National and International filings at the same time and with same manpower.
  3. The Indian Trademarks registry has not been able to entertain the national filings because of the lack of manpower. Now that India has adopted the Madrid system, it would be even more difficult to look into both National and International filings at the same time and with same manpower.
  4. Under the protocol, the international applications have to be processed within 18 months. Because of this, the national filings might get delayed.
  5. The international application is dependent on the basic application/registration, thus, if there is any change in the "basic" application or registration (like cancellation), these changes shall automatically apply to the international applications as well.
  6. Assigning the ownership of an International registration to entities residing or having a connection with Non- Madrid Protocol state is prohibited under the rules of the Madrid Protocol. This is not good for India because it has business interests with several non-member countries and now it will have to file national applications to deal with these countries.
  7. If an Indian basic mark is cancelled or limited in first five years then the International mark will similarly be cancelled or limited. After the expiry of this five-year term, however, the international registration becomes independent.

To conclude, Madrid Protocol provides a convenient and cost-effective way of obtaining trademark protection. However, effective utilization of this system in India will require greater administration and timely management of trademark applications owing to its stringent timelines.

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.

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