AN OVERVIEW OF INDIA 'S ACCESSION TO THE MADRID PROTOCOL

India and the Madrid System for International

Registration of Marks

Madrid system- in a nutshell

• Aims to protect a mark in several countries by filing a single application.

• International Protection in up to 90 countries via a single application.

• Effect of international registration- as if the mark is registered in each of such designated countries.

• Maintained & renewed through single procedure.

• Administered by the International Bureau (IB) of WIPO-maintains the International Register & publishes the WIPO Gazette of International Marks.

Advantages

ONE application for a number of countries

ONE set of fees - one currency

ONE language (English or French)

ONE set of Procedural Rules - no need to worry

about different national procedural rules

Uniform period of protection - 10 years

Easy post registration management

Increase in TMR revenue as IB shares the profits.

Advantages

Practice point of view- Speedy disposal, electronic

correspondence Quick turnaround time Simplifies Portfolio Management - only

one registration to worry about.. phew !

Madrid System is governed by...

The Madrid Agreement- concluded in 1891

&

The Madrid Protocol - concluded in 1989

• Contracting Parties may adhere to either of them or to both.

• Prerequisite for accession- must be a member of the Paris Convention.

• India is Contracting Party to The Madrid Protocol only.

Whats happening in India ?

India acceded the Madrid Protocol on April 8, 2013. Indian applicant – may protect a mark in 87 countries + European Union.

The Trademarks (Amendment) Act, 2010 Yet to be enforced.

Chapter IVA inserted for compliance with Madrid Protocol. Other amendments –Sec. 11, 21, 23, 45, 151, 156.

Trade Marks (Amendment) Rules, 2013 All communications/notices, electronic responses. Chapter IIIA inserted for compliance with Madrid Protocol. Online Filing via “Trademarks International Application system”.

Amendment Act & Rules to be enforced from July 8, 2013.

Relevant provisions: Act Sec.36A to 36G ; Rules 67A to 67M

Advantages of Madrid protocol over Madrid Agreement

International application can be based on national application (basic application*) or national registration (basic registration*).

Protocol can be joined by countries as well as Inter Governmental Organizations (eg. European Union).

Other advantages- Individual fee of designated offices, longer refusal period.

relevant provisions: S.36B(b)&(c);S.36D(1) of the Trademarks Ammd.Act 2010

Kinds of International Applications

1. International application governed exclusively by the Agreement.

2. International application governed exclusively by the Protocol.

3. International application governed by both the Agreement and the Protocol; this means that some of the designations are made under the Agreement and some under the Protocol.

International registrations relating to India

Possible Scenarios -

I. International Applications Originating from India.

II. International Applications where India is a designated country.

I. Applications where Office of Origin is India

The Applicant must- be of Indian domicile/national/have a commercial

establishment in India.

base the international application on an Indian “basic application” or “basic registration”.

must designate the countries in which the mark is to be protected;

filing application online via Trademarks International Applciation System;

Application to be filed on Form - MM2.

Relevant provisions- P.Article 2(2), Rule 1;

I. Applications where Office of Origin is - India (contd.)

Fees Payable- Directly at WIPO + handling fee INR 2000 to TMR. Currency- Swiss Francs.Fees Calculation- Basic fee- 653 CHF plus. Supplementary fee (per class) plus. Complementary fee 100 CHF per country; Or Individual fee of the designated country as

prescribed for example 301 CHF for USA. India to charge an Individual fee of 61 CHF

I. Applications where Office of Origin is - India (contd.)

TMR after receipt of the International Application- Certifies that the application corresponds with the basic

application/registration in all respects. Forwards the application to IB within 2 months of receipt.

IB after receipt of the International Application- checks compliance with the Protocol and Common

Regulations; checks indication of goods/services, classification, fees

paid; informs TMR and applicant of irregularities; records the mark in the International Register & publishes

in the WIPO gazette; notifies the designated countries.

Relevant provisions: Act.Sec.36D(4) ; Rule.67E ; P.Article. 3 (4)

I. Applications where Office of Origin is - India (contd.)

Refusal of protection: designated country examines application as if it

was filed directly at the office; may declare 'provisional refusal' of the mark

based on i) ex officio objection ii) oppositions

provisional refusal communicated to IP within 18 months;

mark is deemed REGISTERED - if no 'provisional refusal' declared within 18 months from receipt of application;

accorded protection in the designated country.

Relevant Provisions- P Article 5 (2) (c)

II. International Applications where India is a designated country

TMR after receipt of international application- may after examination, declare 'provisional refusal'

on basis of ex officio objections. in case of no objections/after removal of objections

by the Applicant - mark is advertised; subsequently, mark is open for opposition (for 4

months); any refusal (ex-officio/opposition) to be informed to

IB within 18 months else mark deemed as PROTECTED in India.

Provisions of Sec. 9 to 21; Sec. 63 & 74 of TM Act, 1999 apply to the International Application.

Relevant Provisions: Act.Sec.36E (2)&(3)&(4)

ALERT ! Basic registration in home country has expired !

Dependence on Basic Mark International Registration dependent on basic

application/registration upto 5 years from the date of registration.

If before the period of 5 years-i) Basic application is abandoned, withdrawn, refused,

rejected by the Office of Origin; ORii) Basic Registration is invalidated, cancelled, not

renewed or expired ………

International Registration ceases to have any effect .

What's in it for us?

Possible increase in the number of trademarks filings in India.

Strengthening of business relations.

Need to engage local counsels for filing will go away.

What India’s accession to the Protocol means for Indian Trademark Agents remains to be seen.