We continue our conversation with Mr. Adham Bousaid regarding International trademark registration in India under Madrid Protocol...
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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 origin.
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 happens next?
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 the holders.
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 renewed.
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 international application.
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 too.
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 be taken.
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 Protocol.
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.
