Designate India in new International Applications from July 8, 2013
India has joined the International Trade Mark System by acceding to the Madrid Protocol. The system comes into effect from July 8, 2013. India is the 90th member of the Madrid Protocol and was preceded by Colombia, Mexico, New Zealand and Philippines. The International Trade Mark System provides trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally through a single unified procedure. Under the International Trade Mark System, not only the applications, but the renewals too can be effected through a single form. Besides providing a cost effective registration to brand owners seeking to extend protection of their marks to India, the International Trade Mark System is equally useful for brand owners in India who can now extend the scope of protection of their Indian registrations by making use of the Madrid Protocol. Few points that require special attention in the Indian context:
- India has signed a declaration whereby the scope of registrations/ pending applications filed before July 08, 2013 under the Madrid Protocol cannot be extended to India, - An applicant designating India under the Madrid Potocol, would be required to furnish a declaration of intention to use the mark, - The deadline for communicating the provisional refusal would be 18 months, - In case of licensing of an International Trade Mark, a separate request for recordal of such license has to be recorded with the Indian Intellectual Property Office and the recordal of license with WIPO will have no bearing on India, - An individual fee (yet to be announced) would be applicable for designating India (it is expected to be similar to the existing official fee of USD 65 per mark per class or lower than the same), - The handling fee for an international application would be INR 2000 (USD 38 approximately).
The Indian Trade Marks Office has already taken steps for smooth implementation of the International Trade Mark system including digitization of records, updating website to bring in more transparency, improving the facility for online filing, recruiting more examiners etc. The introduction of the International Trade Mark System will make trade mark protection in India much simpler than ever.
Should you or your client wish to extend the benefit of the same in the important Indian market and require any assistance in filing a response to the office action or in any other regard, please do not hesitate to write to us at email@example.com