Search This Blog

Monday, June 19, 2017

Madrid Protection in India: Advantages and Disadvantages

India became member of Madrid Protocol on July 8, 2013. 

The Initial advantages of Madrid system were huge as compared to filing a convention or ordinary application in India. For example, there was no limitation as to no. of goods or services in the description for Madrid filing, while those entering India otherwise were to pay for each additional character beyond 500 characters excluding space. Further, there was no mandate for payment of association fee, while other applicants with prior applications were to pay association fee for each of their prior application. Other advantage of course was saving the attorney fee and centralisation of trademark portfolio.

But since the Trademark Amendment Rules 2017 have been notified from March 6, 2017, the disparity as to misc. fees for extra characters and association fee has been removed. Now even for direct Application into India otherwise than Madrid route, there is no limit as to description of goods or services. 

However, the major advantage a direct filer has as compared to Madrid filing, is the examination, the direct applications are examined within a month of filing, whereas for Madrid Application it takes time for designation, allocation of IRDI no., examination of application and then communication of Provisional refusal if any to the Applicant. The time lapse is so big that where one has filed two applications for same mark on same day, one through Madrid and one direct, it is possible that one may get a registration certificate for its direct application before Madrid Application is examined.

There may be repercussions where two or more entities are adopting the same mark simultaneously and are coming to India through different routes. One other major disadvantage of Madrid system qua India is that it does not allow Applicants to claim user date, where a direct Applicant in India may file an application along with user affidavit/ evidence and where user is substantial and prior than the cited marks, on basis of same, the application may be allowed to proceed to registration, even where similar marks are on register. 

Unlike the direct Trademark applications which are allowed with some disclaimer and limitations, the Indian Trademark Registry has not yet started allowing the Madrid designated applications with disclaimer or limitation. They are either accepted in totality or objections are retained.

Besides watch services for conflicting marks that are usually offered by all major IP firms in India would be big issue, in absence of instructions Applicant would not be aware if some mark conflicting to its mark is sought to be registered in India.

Considering pros and cons, direct filing still looks more beneficial, where brand owners have substantial stake in the marks.

1 comment:

Use of registered marks on the Google Ads Program as keywords amounts to trademark infringement and constitutes passing-off: Delhi High Court

  In the matter of  Makemytrip India Private Limited vs B. V. & Ors. , vide its order dated 27th April 2022, Justice Pratibh...