Registering Trade Marks Abroad Made Easy: Indian Government Releases Guidelines for Functioning Under the Madrid Protocol

International Trademarks Made EasyEarlier last year, SpicyIP had reported that India officially joined the International Trademark System by depositing its instrument of accession to the Madrid Protocol. Prior to India’s accession, there was much debate and discussion regarding the amendments to be made to the Trademarks Act and rules, in order to give effect to the provisions of the Madrid System. Posts on the history of the Trademarks Amendment Act, 2010 and the debates surrounding the same can be found here, here, here and here.

To provide a quick re-cap, the Madrid System provides a mechanism wherein domestic trademark holders can protect their trademarks around the world (in countries which have also acceded to the Protocol) without having to register the trademark in every country where they want it to be protected. The Protocol is administered by the International Bureau of WIPO, and works along with the Trade Marks Registry (“TMR”) in India.

While the Protocol has been effective in India since last year, the Indian government has recently notified the much-awaited Guidelines for Functioning Under the Madrid Protocol. The Guidelines clearly delineate the functions of the Trade Marks registry both as an office of origin and as an office of the designated contracting party. As an office of origin, the Trade Marks Registry  is to receive applications for international registration from India, verify that the applicant is an origin of India, or domiciled in India or has a real and effective business in India and also that the applicant has a trademark registered within the Indian Trade Marks Registry. The fee payable to the TMR towards this end is Rs.2,000. On verifying that the trademark is in conformity with the requirements of the Madrid system, the application is forwarded by the TMR to WIPO. The TMR then receives information regarding irregularities, if any, from the WIPO and responds to them accordingly.

As an Office of the Designated Contracting Party, the TMR is to examine every international registration received from the WIPO, under the provisions of the Trademarks Act and Rules. While examining the applications, the TMR is to consider whether the trademark can be refused registration as per the provisions of the Indian Trade Marks Act, 1999 and Rules. The TMR must then communicate objections, if any, to the WIPO within 18 months. If there are no objections, the TMR shall publish the particulars of the newly registered trademark in a separate part of the Trade Marks Journal. The trademark can be opposed within 4 months of publication in the journal. The TMR office is to receive oppositions, communicate the same to WIPO and decide about the validity of the registration.

Earlier, the procedure for registration through the Madrid system was scattered across the amended Trade Marks Act, Trade Mark Rules, 2010, the Madrid Protocol and the Common Regulations. The Guidelines have combined all these instruments, thereby greatly helping the TMR and potential applicants.

However, what is evident from a glance through these guidelines is the central role of the TMR. Throughout India’s process of accession to the Madrid system, a concern that has been raised is the ability of the TMR to deal with the excess burden of handling international applications. The TMR already faces a backlog of hundreds of thousands of pending trademarks. The Guidelines require the TMR to not only receive  and scrutinise international applications, but also act as an adjudicatory body with respect to disputes and objections. Further, the TMR is to act in a time-bound manner when communicating with the WIPO. This puts the TMR under immediate international scrutiny- one can perhaps optimistically hope that this will pressure will enhance the efficiency of the Registry. A related concern is that given its international obligations, the TMR will ignore domestic trade mark applications. Only time will tell whether this will be the case.

As for the revenue aspect, while it is indeed true that international trademark filings in India will go down as India now comes under the Protocol, Indian law firms and trademark attorneys need not worry as the scope for opposition cases will increase with the large number of international trademarks being registered in India.

Another aspect that needs consideration is how beneficial this system will be for Indian trademark holders. While it is undoubtedly cost-effective for those seeking to protect their trademark worldwide, India’s neighbouring countries such as Nepal, Sri Lanka, Pakistan and Bangladesh are not member countries. Therefore, Indian businesses will still have to file domestic applications in these countries. Hence, for smaller establishments which don’t have a presence outside these neighbouring countries have little use for the Madrid Protocol (although the Protocol itself may encourage such establishments to expand their presence abroad).

The Madrid Protocol simplifies the process of registering trademarks internationally, thereby encouraging more foreign firms to do business in India. Accession to this system also encourages smaller Indian firms to expand their operations internationally as they don’t have to spend as much of their resources in protecting their trademarks abroad. The newly notified Guidelines further simplifies the process by bringing all the rules and regulations regarding the Protocol in one document. India’s accession to the Madrid System is an interesting development and we will have to wait and watch as to how the Indian Trade Marks Registry as well as trademarks litigators and law firms in India deal with the change in the system.

Special thanks to Mr. Mathews for guiding me with this post. His article on the Madrid System and Indian Trade Mark Owners can be found here.


Spadika Jayaraj

Spadika Jayaraj

Spadika is a student of the National Law School of India University, Bangalore. Apart from Intellectual Property Law, she is also interested in Law and Technology issues.

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