India's accession to the Madrid Protocol of International registration of trademarks: introduction and procedure for filing international trademark registrations using Madrid system for international registration of trademarks

1. A N O V E R V I E W O F I N D I A ' S A C C E S S I O N T O T H E M A D R I D
P R O T O C O L
India and the Madrid System
for International Registration of
Marks

2. 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.

3. 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.

4. Advantages
Practice point of view-
 Speedy disposal, electronic correspondence
 Quick turnaround time
 Simplifies Portfolio Management - only one
registration to worry about.. phew !

5. 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.

6. 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

7. 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

8. 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.

9. International registrations relating to
India
Possible Scenarios -
I. International Applications Originating from India.
II. International Applications where India is a designated
country.

10. 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;

11. 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

12. 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)

13. 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)

14. 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)

15. 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; OR
ii) Basic Registration is invalidated, cancelled, not
renewed or expired ………
International Registration ceases
to have any effect .

16. 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.

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