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International trademark filing under the Madrid Protocol: A brief overview

By: Nidhi Tandon

Registration of a trademark is territorial in nature like most other forms of intellectual property rights. In all instances where an Indian entity desires to sell/market its products and services in various international markets or where a foreign entity desires to do so in India, trademark protection has to be sought under multiple jurisdictions. This onerous and expensive process of filing for trademark protection in each jurisdiction has been mitigated to a large extent with India adopting the Madrid Protocol (Protocol) in July 2013.

The Protocol, a treaty for the international registration of trademarks administered by the International Bureau of the World Intellectual Property Office (WIPO), has simplified the process of filing trademark applications in multiple jurisdictions across the world. With 97 countries being signatories to the Protocol as on date, an applicant can file a single application in its national trademark office paying registration fees, in one currency. Once a trademark application has been filed in the home/origin country, the applicant can use that date of application as its earliest date of priority in other signatory countries.

Amendment to Trademarks Act

The Trade Marks Act, 1999 was amended in 2010 to include a new chapter on the special provisions relating to protection of Trademarks through international registration under the Madrid Protocol. This chapter specifically focuses on the procedural and statutory requirements for international registration of trademarks paving the way for bringing the Protocol into force.

There are two possible scenarios while filing the trademark in India through the Protocol:

  1. When India is the origin country; and

  2. When India is the designated country.

When India is the origin country

When India is the origin country, the Indian Trademarks Registry (TMR) being the office of origin will receive applications for international registration from an applicant who:

  1. is a citizen of India or domiciled in India; or

  2. has a real and effective business in India; and

  3. has a trademark registered or whose application for registration of trademark is pending with the TMR.

The applicant filing for international application must have a national trademark application (basic application) or a registration of trademark (basic registration) with the TMR. This basic application or basic registration will be used as the basis of the international application that will be for the same trademark, class and description of goods and/or services as that mentioned in the basic application or basic registration. While making an international application to the TMR, an applicant must select the particular member country where he seeks protection of the trademark. Upon verification of the trademark, the application will be forwarded by the TMR to the WIPO. Thereafter, the WIPO will examine such applications and send the necessary communication to the TMR and the applicant. The applicant has to file the response electronically on the TMR’s website together with such supporting documents as may be required to address any irregularities (such as lack of documentary evidence). In all such instances, the TMR acts as a channel between the applicant and WIPO.

The international application will get processed for certification if the WIPO finds it to be in order. An alert is then sent to TMR (and the applicant in some cases) regarding the certification of the application.

The time taken to obtain an international registration under the Protocol in India ranges anywhere around fifteen to eighteen months.

It is pertinent to note that an international application is dependent on the basic application or basic registration. Any change in the basic application or basic registration (like cancellation or abandonment) will automatically apply to the international application as well in the first five years from the date of filing the international application. The international application becomes independent after the expiry of this five year term.

When India is the designated country

When an international applicant desires to seek trademark protection of an international trademark application in India, such application is filed with the WIPO selecting India as the designated country. The international trademark application must be recorded and an international registration number be attributed in the home country prior to such filing. Upon receipt of such application from the WIPO, the TMR will examine the application to ensure it meets the criteria for registration in India. In case of any objection by the TMR, a provisional refusal is communicated to the WIPO, to be shared with the applicant of the international application. Such applicant may respond to the provisional refusal and request the TMR to reconsider it through an Indian agent. If there are no objections raised by the TMR, the TMR will publish the particulars of the trademark in a separate section of the Trade Marks Journal. The trademark can be opposed within four months of publication in the journal. Oppositions, if any, will be received by the TMR and communicated to the WIPO to decide on the validity of the registration. If there are no oppositions raised in India or if there are no grounds for refusal within the prescribed period, then the TMR will notify the ‘Grant of Protection’ of the international registration within a period of eighteen months.

In the globalized era, the Protocol offers businesses a cost and time-effective option to extend protection for a trademark in multiple jurisdictions through a single window registration process. It also significantly reduces the requirement for applicants to retain separate legal counsel in multiple jurisdictions besides speeding up the prosecution process. In effect, it is more a bundle of national rights that is centrally managed rather than an international trademark registration per se.

It has been a little over two years since India’s accession to the Protocol. While some procedural issues relating to filing through the Protocol have to be resolved, it remains to be seen how some inconsistencies across different statutes in different jurisdictions will be addressed. For example, countries like USA consider only actual use in commerce in USA as use while India considers trans-border use as use in India. Also, there appears to be no specific procedure to deal with opposition proceedings in international applications where India is a designated country.

Several international applications have been received by India under the Protocol from multinational companies who want to have India as one of the ‘designated’ countries for the protection of their trademarks. The biggest ambassador for the use of this Protocol by Indian companies is the ‘Make in India’ trademark that the government has sought to protect in several countries including USA, China, Japan and Singapore. Other Indian-origin trademarks that have opted for protection through the Protocol include the popular snacks company, Haldiram’s mark ‘Minute Khana’ and the Bollywood movie “Dhoom” marks. Overall, the response to filings through the Protocol appears to be lukewarm in India though it has significantly simplified the process to seek trademark protection for Indian companies as well as multinational corporations in international jurisdictions through its single window filing process in a cost and time-effective manner.

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