Madrid protocol – India Deadline to respond to objections: The deadline to respond to objections raised by the Indian Trademark Office is 30 days from the date of receipt of the provisional refusal notification by the applicant. Accordingly the date
The international registration and management of trademarks is facilitated by the Madrid Agreement or the Madrid Protocol or in some cases by both the Protocol and agreement and is administered by the World Intellectual Property Organization (WIPO) located in Geneva,
India became a member of the Madrid Protocol on July 8, 2013 and since then has received about 13768 applications designating India and has filed 155 applications under the Madrid Protocol. While there have been several debates on the best route to take in terms of protecting international brands in India, and both have good arguments, there is one issue that I would like to deal with today – the claim of use of your trademark in India.
International Non-Proprietary Names (INN) are globally recognized names for pharmaceutical substances or active pharmaceutical ingredients and are also known as generic names. The International Non-Proprietary Names were first initiated by the World Health Assembly in 1950 with a view to designate universally recognisable names for pharmaceutical substances. In furtherance to this, the WHO has published a list of over 7000 generic names since its inception. The WHO guidelines states the importance of INNs as follows:
When it comes to international treaties and agreements, India generally signs first and thinks later. We sign on fast and then push the limits of implementing and amending our national laws until the last possible day. India’s accession to the Madrid Protocol was done in a rather similar manner. Either way India is a part of protocol which is touted as the international registration of trademarks. A little over a year down the line and the scenario is rather interesting: the Trademark Office in conjunction with several business organizations keep hosting seminars and conferences on using the Madrid system and yet as on date, there have been only 76 trademark applications filed using the system from India against 6660 trademarks filed through the system into India.
The Madrid Protocol has simplified the process of filing trademark applications across the world by bringing it all under the World Intellectual Property Organization (WIPO). Once a trademark application has been filed in the home country or what is generally referred to as the origin country, one can designate other countries that are a part of the Madrid Protocol using the registration of the origin country as their earliest date of priority. Currently, 92 countries are a part of the Madrid System and so if one applies for a trademark in the origin country which is a part of this System, that individual or entity has the option of using that application as the basis of applying to the other 91 countries listed on the Madrid Protocol. Additionally, trademarks that have been registered can also be designated to other countries.
The Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules, 2013 came in to force on July 08, 2013. In principle the amendment marks the official entry of India to the International Filing System under the Madrid Protocol. The Madrid system enables Indian businesses to file a single application in one language, one fee in one currency in India for registration of their trademark in all or any of the member countries of the Madrid Protocol.
While we are all excited about India becoming a part of the Madrid System on July 08, 2013 there are serious concerns on how the Indian trademark office already struggling with delays and quality of examination going to cope up with the new international applications. Among other issues such as Central Attack and whether an application can be filed in India by a foreign lawyer the following are some practical issues that the Government should have looked into before giving false hopes.
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