Trademark

India Joins the International Trademark System


Yesterday, Minister for Commerce and Industry, Mr. Anand Sharma submitted India’s instrument of accession to the Madrid Protocol for the International Registration of Marks at the World Intellectual Property Organisation (WIPO). MR. Sharma is attending a High Level Policy Dialogue on “Innovation and Development: The Indian Experience” at the WIPO. The treaty will come into force with respect to India from July 8, 2013.

Mr. Sharma and Mr. Gurry at the WIPO yesterday
(Photo: WIPO/Berrod)

The main attraction of the Madrid System is that it offers a trademark owner the opportunity of having his trademark protected in all the member countries of the Madrid system through a single application in a single language with a single set of fees. As a result of India joining the Madrid System, trademark owners can get their trademarks protected in the Indian market as well as in the markets of the eighty nine other member countries through a single application. This step therefore, makes it much easier for trademark owners to get protection for their trademarks in India by significantly reducing the paperwork and currency involved. The same benefit is also available for Indian companies who want their trademarks protected in the other 89 member countries of the Madrid  System.

The Madrid System also allows trademark owners the benefit of online tools which can be used to find existing trademarks, estimate the filing costs and to make electronic payments for the same, check registration status etc. This makes the task of subsequent management of the trademark much easier as well as registration can be renewed online and subsequent changes can be recorded etc through a single procedural step.

(Readers can refer to Mathews’ excellently written two part post on the Madrid System and Indian trademark owners, available here and here, for a more detailed analysis of the same.)

These benefits have resulted in the Madrid System becoming attractive for large businesses as well as SME’s.  While there has generally been a strong growth in demand for IPR’s in 2012, there has been a 4.1% increase in the number of trademark applications filed under the Madrid system in particular in 2012 as compared to 2011. In fact there were 44,018 applications filed in 2012 which was the highest number of applications filed under the Madrid system till date. The statistics regarding the applications can be found here.
On the whole, India’s membership in the Madrid System appears to be a welcome step for foreign companies who wish to register their trademarks in India as well as for Indian companies who can get registration for their trademarks in any or all of the member countries of the Madrid system, according to their business needs through a cost-effective, time-friendly, comparitively hassle-free step.
(For readers who are interested in whether the Trademark Registry in India is in fact capable of meeting the deadlines that the Madrid Protocol prescribes can check out these posts about the TM Registry, available here and here  as well as Prashant’s analysis of the Trademark Amendment Bill, 2009 through which there was an attempt to incorporate the Madrid Protocol.)
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L. Gopika Murthy

Gopika is a fourth year student at National Law School of India University, Bangalore. She was formerly the Chief Editor of the Indian Journal of Law and Technology. Her first exposure to Intellectual property law and SpicyIP was through the University Moot Rounds at NLSIU, Bangalore in her first year. She has been regularly following the developments in the field of IPR since then and she hopes to contribute to the reporting of such developments. Her areas of interest in IP include copyrights, open access, fair dealing and trademarks.

4 comments.

  1. AvatarABC

    Gopika,

    BTW what is the status of new Trademark Rules, because of which this has been stuck for past two years ? Unless the new rules are framed and enforced Madrid system can not be used.

    Reply
  2. AvatarL. Gopika

    Hello,

    Beyond the fact that the draft of the trademark amendment rules, 2012 is available on the website of the Controller General of Patents, Designs and Trademarks, I am unaware of their current status. Sorry for not being to help.

    Reply
  3. AvatarAnonymous

    These Draft Rules are there for quite some time now. Hope something will be done to take them beyond the draft.

    Reply

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