continue our conversation with Mr. Adham Bousaid regarding
International trademark registration in India under Madrid
Image Source: http://www.wipo.int
A: Sir, to file an application under the Madrid
Protocol through India, a person should be a citizen of India or
should be domiciled in India or should have a real and effective
business in India. Since your chain of hotels has been established
in India alone, India will be the country of origin and you can
file an application from India. Your international application will
be presented to the WIPO by the office of origin, in this case the
Indian Trademark Registry. It has to be presented on the official
form and in one copy and should be signed by the office of
Also, your application should essentially contain the name and
address of the applicant, and a reproduction of the mark. Here, you
should note that the application can be submitted only in
electronic form along with prescribed fee.
AB: Ok, once I submit the application, what
A: Once you submit your application to the
Trade Mark Registry, the Registry will review and certify your
application and then submit it to the WIPO.
Next, the WIPO does a formality check of the international
trademark registration. If there are no issues, then the mark is
registered and published in the WIPO gazette. The mark is then
forwarded to the Designated Contracting Parties i.e. the countries
where you want your trademark to be registered.
Now the Designated Contracting Parties will review the
application as per their national law. In the event of any
opposition or objection, the provisional refusal is communicated to
the WIPO who then communicates it to the applicant. The Registries
of the Designated Contracting parties also entertain responses from
If there is no objection or the objections have been waived off,
the Designated Contracting Party will grant protection to the
trademark as a mark registered with their office. This protection
will be for a duration of ten years after which it has to be
AB: Excellent! Excellent! I think I should opt
for the International trademark registration under Madrid Protocol.
I am pretty sure many people in India are doing the same. I
don't want to be left behind!
A: Sir, sir...there is a prerequisite to filing
a Madrid Application. You will have to file an application with the
Indian Trademark Registry for the registration of the mark in
India. This is known as dependency of mark. Your international
trademark registration will depend on your Indian application for a
duration of 5 years. Any modification, cancellation or withdrawal
of the application in India will immediately reflect on your
As to people opting for the Madrid Protocol in India, it is very
sad that India has filed for only 385 trademark registrations in
the last year. But then, there is awareness that is being raised
and when people like you opt for it, we are sure others will
AB: Good, good. And don't worry about
getting my mark registered in India. I have to do that anyway. I
have one doubt. What should I do if a designated contracting party
brings forth any opposition or objection?
A: Sir, there is a complete procedure laid out
for responding to objections and oppositions. In the event of any
opposition or objection, the same is communicated to the WIPO who
in turn, informs the Office of Origin, which in your case is the
Indian Trademark Registry. The Trademark Registry will then
communicate the same to the applicant, who will then have a month
to respond to them. Based on the response, appropriate action will
AB: The Madrid Protocol Procedure is really
good. However, this process is a tad bit complicated.
A: Sir, why fear when
Intepat is here? At Intepat IP Services Pvt Ltd, we specialize
in filing trademark applications under the Madrid Protocol. With an
expert team, we look into every matter right from the filing of the
application till the registration of the trademark. You will not
have to worry a bit!
AB: That is great! So it is settled then. Shall
we commence the filing process from tomorrow?
A: Sure Sir! You can now be assured that your
trademark is in safe hands! And you can learn more about the Madrid
System in the following Video. You can also learn more about how to
file a response to provisional refusal under Madrid
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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