Jul 10, 2013

Madrid Protocol becomes effective in India

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Madrid Protocol becomes effective in India
Marking a significant progress of the Indian subcontinent in the area of trademark law, India acceded to the Madrid Protocol on 8th April 2013, making the same effective in India beginning 8th July 2013, as per the Information Notice No. 15/2013 dated 29th May, 2013 issued by WIPO and Public Notice issued by the Controller General of Patents, Designs and Trade Marks (CGPDTM) on 8th July 2013.
A notification dated 5th July 2013, issued by the Ministry of Commerce and Industry, DIPP, also notified that the Trade Marks (Amendment) Rules, 2013 which incorporate provisions relating to international registration of trademarks as under the Madrid Protocol, and brings in some amendments to the existing Act, have also come into force from the 8th of July 2013.
The accession to the Madrid Protocol comes as a major advantage to the domestic applicants of India, as it gives the applicant an ability to file international application on the basis of a pending application in a Contracting Party to the Protocol or for a registered mark in the jurisdiction of the Contracting Party.
What is the Madrid Protocol?
The Madrid Protocol is a treaty that provides for the international registration of trademarks, by filing of a single application in one language, for ensuring registration in several countries. The Madrid Protocol, along with the international treaty called the Madrid Agreement, governs the Madrid system (as it is known), for the international registration of trademarks. The system is administered by the International Bureau of the World Intellectual Property Organization (WIPO), which maintains the International Register of marks. The Protocol is an offshoot of the Madrid Agreement, and came into existence in the year 1989, and came into force on 1st April 1996.
India amends Trade Marks Law (Effective 8th July 2013)
The notice issued by the CGPDTM also makes effective, the amendments to the existing Trade Marks Rules. The Trade Marks (Amendment) Rules, 2013 introduces Chapter III A to the existing Trade Marks Rules, 2002 relating to ‘Special Provisions relating to Protection of Trademarks through the International Registration under Madrid Protocol’. By virtue of these amendments, India has brought about the necessary amendments and changes in its existing trademark law to be in harmony with the Madrid Protocol.
Madrid Protocol comes into force in India from 8th July 2013
On 8th April 2013, India became the 90th member of the Madrid Protocol (and not the Madrid Agreement). By virtue of this, India has now become a party to the Protocol, and as agreed, the Protocol is effective in India with effect from 8th July 2013.
This comes as a cost effective step for any natural persons and legal entities established in, domiciled in, or a national of India, having a registered trademark or a pending application for registration of trademark in India, as this system will allow an applicant to make online application for the international registration of the trademark in the member parties to the Protocol.
Thus, an Indian applicant can make an application for registration in as many as 89 member countries to the Protocol, apart from India through a single application. Simultaneously, this also implies that trademark owners can get their trademarks protected in the Indian jurisdiction, as well as in the jurisdiction of the 89 other member countries through a single application.
A list of the Contracting Parties to the Protocol can be found at http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=8
The Protocol Advantageous.
The system is advantageous to an applicant as it cuts short the requirement of filing many national applications in several or all countries of interest, in several different languages, and understanding the several procedural laws of the countries the mark is intended to be registered in. To some extent, it also saves the separate filing fees to be paid for registration in each jurisdiction.
Thus, under the system now, an international registration may be obtained by simply filing a single application with the International Bureau of the WIPO, in a single language (English in case of India), and on payment of single set of fees, though the application has to be made through the Office of Origin.
These advantages also exist for renewals, and for recording of transactions such as assignments, etc, where such recordings can be made at one place itself.
What must be understood though, is that registering through the Madrid Protocol does not create an international right per se, it only creates a bunch of national rights, administered centrally.
Registering trademarks across 90 countries, by filing of a single application will be a very attractive solution for corporate and individuals alike. Though what remains to be seen is the challenge that this will be for its implementation in India, given the requirement of processing of the application by the Registrar of Trademarks within time limits, and the known backlogs in the processing of these applications in India. Nonetheless, the Protocol becoming effective does increase the international protection and opens up avenues for growth and recognition in newer business markets.
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