On 8 April 2013, India finally deposited the instrument acceding to the Madrid Protocol.  The international trademark registration system is expected to come into force in India from 8 July 2013. It became the 90th contracting party to join the Madrid Protocol.

In the run up to the accession, the Indian Trade Mark Office (TMO) had undertaken various special projects, for instance, the restoration of marks renewed but removed from the Register in error, re-constitution of missing files at the TMO, special hearings for post-registration data amendments, etc. We, at pmc, had issued updates for each of these projects for our clients’ benefit.

To govern the registration through the international system, Trade Marks (Amendment) Rules, 2013 have been drafted. The Rules state that subject to the provisions of the Trade Mark Act, the provisions of the Madrid Protocol, Common Regulations and Administrative Instructions shall apply in relation to international applications originating from India and international registrations where India has been designated.

The Rules specify English as the language of communication to and from the International Bureau (IB). Also, all communication pertaining to international applications shall be in electronic form only. The TMO has undergone a technological upgrading to accommodate complete e-transmission of data pertaining to IR’s, including maintenance of an online “Record of Particulars of International Registration”. Provision for complete online filing of International Applications and online receipt of designations & other correspondence from IB, WIPO has been introduced.

To cater to the anticipated increase in filings, manpower at all branches of the TMO has been increased. The TMO staff have been trained on the provisions of the Madrid Protocol for smooth functioning.

With the Madrid Protocol in place, the Indian TMO is presently gearing up to bring the trademark practice on par with the examination of international registrations. Rest assured, we shall keep you abreast of the developments on India’s move forward with Madrid Protocol.