India became a part of the Madrid System since July 08, 2013.
The Madrid Agreement and the Madrid Protocol constitute the Madrid System, which governs the international registration of trademarks.
Chapter IV A has been included in the Trade Marks Act which exclusively deals with procedural and statutory requirement for dealing with International Registrations through Madrid Protocol in India.
We assist clients from around the world with respect to provisional refusals issued by the IPO.
Short deadline of one month from date of receipt of provisional refusal by right holder) to file response
Deadline is extendable on a monthly basis by payment of extension fee
Power of Attorney is needed to file response
Chances of success opinion is provided free of costs by us
We can file response within 24 hours in case of short deadline
Fixed costs in most cases
Dedicated team for madrid cases, please mail us at firstname.lastname@example.org
INTERNATIONAL REGISTRATIONS DESIGNATING INDIA
The international registration designating India received from the International Bureau of WIPO is examined by the TMR.
If there is any objection for protection of such registration, a provisional refusal will be notified to the International Bureau of WIPO latest within the period of 18 months from the date the international registration was notified to India.
The International Bureau records the provisional refusal in the international register and communicates such provisional refusal to the holder (applicant) of the international registration.
The holder then responds to the provisional refusal only through an Indian Agent within one month from receiving the notification of provisional refusal. (Extendible)
The TMR considers the response of the holder and in case a hearing is required a show cause hearing shall be fixed and the same shall be conducted by a designated officer.
Rejection of Application:
The International Application shall be rejected in India if:
> If no response to the provisional refusal is received by the office after 1 month of the notification; or
> No request for extension of time is received; or
> No limitation of scope of international registration is made pursuant to the provisional refusal; or
> If the office objections could not be waived by the designated officer of the TMR, even after considering response and after giving an opportunity for hearing.
Allowance and Publishing of Allowed Applications:
If and when the international registration is accepted for protection in respect of all or some of goods/services, the particulars of the international registration shall be published in a separate part of the Trade marks Journal.
If an opposition to protection of the international registration is received within 4 months after publication of an international registration in the trademark journal, the TMR shall communicate the provisional refusal based on opposition to the WIPO and dispose the opposition as per the relevant provisions of the Trade Marks Act & Rules and notify the final decision thereafter to the IB of the WIPO.
In case no opposition is received within 4 months or the opposition proceedings are ruled in favor of the Applicant. The mark is Application is accepted and registered in India.
The international registration shall remain dependent on the mark registered or applied for in the Office of origin, for a period of five years from the date of its registration. If, and to the extent that, the basic registration ceases to have effect or the basic application is refused or withdrawn or treated as abandoned within the five-year period, the international registration will no longer be protected.
CERTAIN SITUATIONS WHERE NATIONAL ROUTE SHOULD BE PREFERRED OVER MADRID SYSTEM
1) When marks are already in use in India:
It is pertinent to note that, where a mark proposed to be registered in India is already being used in India, it is advisable to file a national application rather than filing an application through Madrid, the reason being that the Madrid system in India carries a default declaration that the application is based on “intent to use” the mark in India.
2) Subsequent Designations for Madrid Applications filed prior to July 8, 2013
In such cases, subsequent designation is not possible for India and a national application must be filed to protect the mark in India.
INDIA AS OFFICE OF ORIGIN
The Madrid system provides a means to seek protection for a trademark in a large number of countries simultaneously. An application for international registration may be filed only by a natural person or legal entity having a connection—through establishment, domicile or nationality—with a party to the Agreement or a contracting party the Protocol.
The Madrid System is administered by the International Bureau of WIPO, which maintains the International Register and publishes the WIPO Gazette of International Marks.
Filing of Application
The applicant desiring to file an application for international registration of trademark under the Madrid Protocol through India, must be able to meet one of the following three criteria:
> The applicant should be a national of India, or
> The applicant should be domiciled in India, or
> The applicant should have a real and effective business or commercial establishment in India
Further, in order to file an international application under the Madrid protocol, there should be a corresponding trademark application filed in India. The international application will have the same trade mark as mentioned in the national trade mark application or registration; and the list of goods and services mentioned in the international application should be identical with or no wider than that of the basic (national) mark.
The International Application must be submitted on form MM 2(E), on line and through the system. In case the United States is designated in the International Application, the applicant must also submit through the system a form MM18 (E) with the International Application. In case the European Union is designated in the International Application, the applicant shall also indicate a second language before the office of the European Union, out of- French, German, Italian & Spanish.
Verification and Certification Of International Applications
In case of any deficiency in the application, a letter as shall be generated through the system and the same shall be sent by email, to the person who has submitted the application and he/she shall be required to rectify the deficiency within one month from the date the same was communicated. The applicant/agent/attorney as the case may be, shall respond to the official communication relating to deficiencies online through the system or by email at the address prescribed by the office for this purpose.
The response of the applicant shall be considered by the officer designated for this purpose and if deficiencies are remedied he/she shall modify the application accordingly. If the irregularities are not rectified, a refusal letter shall be generated through the system and the same shall be sent to the applicant/agent/attorney as the case may be, by email. If however, the irregularities are rectified after the period of one month from the date the irregularities were communicated or even after the refusal letter from the office, the designated officer shall modify the application. If the International Application is properly filed or irregularities, if any, are rectified the International Application shall be moved for certification. While transmitting the International Application to the IB of WIPO, the designated officer of the TMR shall send an alert to the applicant at his email, informing about the transmission of his application to WIPO, and the amount of fee in Swiss Francs payable by the applicant directly to the WIPO.
CALCULATION OF FEE
The fees can be calculated using the online tool by choosing Office of origin as India, selecting the number of classes and specifying whether the mark is in colour: