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Madrid Protocol in force in India as of 8 July 2013

India is reputedly the country where trademark applications take the longest time to be examined, and if objected to, to achieve registration. According to recent statistics, they receive close to 200,000 applications in the past year (i.e. pre-Madrid Protocol) but issued close to only 50,000 registrations. You can imagine the build-up of pending applications. “Recent” applications are estimated to take about 3 years to be examined while some old applications continue to escape attention.

 

The Madrid Protocol came into force in India on 8 July 2013.  What would the coming into force of the Madrid Protocol in India mean against this backdrop?

 

1. Good news in terms of transferability of International Registrations
Indian companies and companies with real and effective industrial or commercial establishments can be holders of International Registrations. Since some of the world’s wealthiest organizations are in India, and many European companies are being sold or offered for sale lock, stock and barrel, Indian companies being in a good position to take over trademark portfolios including International Registrations, may be a positive (even if small) development.

 

2. Good news for applicants outside of India??
Applicants outside of India requiring trademark registration in India can decide to file national applications or designate India in an International Registration. The national applications are still being examined at a slow pace and there is concern that the allocation of the already over-strained resources to attend to Madrid applications designating India will only lead to an increase in backlog in the national applications. If one chooses to seek protection in India by designation of India in an International Registration, there is at least the requirement under the Madrid Protocol for the Indian Registry to complete examination within 18 months of being notified by the International Bureau of the request for protection in India. It remains to be seen how the Indian Registry will cope with this but the provisions of the Madrid Protocol puts pressure on the Registry to be attending to the applications under the Madrid system (possibly meaning reduced attention to the national applications).

 

3. Unlikely to have much impact on Indian Applicants’ filings in other Madrid Protocol countries.
Acceding to the Madrid Protocol also means that Indian companies can choose to protect trademarks abroad by designating the Madrid Protocol countries in an International Registration rather than filing national/regional applications in each of these territories. However, the International Registrations filed through the Indian Registry will have to be based on an Indian application or registration. Where it will take a long time to know the outcome of the basic Indian application, Indian Applicants should consider carefully whether using the Madrid system for their overseas registrations will be a good choice. If they filed national/regional applications in the territories of interest, they may well secure the foreign registrations independent of the outcome of the Indian basic application much earlier.

 

On the other hand, Indian companies that have domicile or “a real and effective industrial or commercial establishment” in another Madrid Protocol country will have an additional option of filing an International Application through another Madrid Protocol country. For example, Tata Oil can probably benefit by filing a national Singapore application and then filing an International Application through IPOS. This may be worth drawing to the attention of Indian multi-nationals.