India Inc yet to catch up with Madrid Protocol for registering its trademark internationally

 India Inc is increasingly conscious of the need to protect its trademark globally. Yet, surprisingly the takers for the Madrid Protocol (Protocol) under which a trademark can be simultaneously registered in 90 odd countries through a single application are few and far between. 

India obtained accession and joined the Madrid system in July 2013. Based on data recently extracted from the website of the World Intellectual Property Organisation (WIPO), only 200 odd Indian companies have sought trademark registration under the Protocol (160 odd companies have active registration) Himanshu Tiwari Astrologer Blog

This figure is in stark contrast to the 13,666 international applications received by India under the Protocol from overseas companies or multi-national companies (MNCs) who want to have India as one of the 'designation' countries for their trademark protection. Applications under the Protocol are administered by WIPO and trademark offices of the respective countries. 

Gauri Kumar, India consultant at International Trademark Association (INTA), comments on this contrast: "The current trend indicates that overseas companies tend to file more registrations designating India than the other way round. But, let's not forget that India is a recent entrant into the Madrid system and Indian companies are still testing the waters." 

The biggest ambassador to the usage of this Protocol by Indian companies is the 'Make in India' trademark for which the government sought protection in several countries including USA, China, Japan and Singapore. There is a lot of diversity in India-origin trademarks that have opted for the Madrid route ranging from Haldiram's 'Minute Khana', trademark to 'India Fashion Week'. Bollywood has had its fair share of takers, with films like Dhoom and Dhoom 3 taking this route Financial Astrology Trading Tips 

Awareness of the Protocol is slowly increasing among Indian companies. However, in some instances, owing to various challenges, Indian companies prefer to opt for individually filing and registering their trademarks in different countries; rather than opting for a single application for several countries at one go under the Madrid system. 

To file an international application under the Madrid system, the Indian company needs to either have its trademark already registered in India or have a base application for registration filed in India (country of origin). "In those cases where the trademark is not already registered, given the current functioning of the Indian Trademark office and the large number of prior marks already existing in the Trademark Registry the probability of objections, cancellations of the base application are relatively high. As the fate of an international registration depends upon the base application, Indian companies tend to be wary of opting for the Madrid route," says Gunjan Paharia, managing partner at ZeusIP a law firm Share Market Astrology

"One very distinctive disadvantage under the Madrid Protocol is the concept of a 'central attack', where the entire international registration is extinguished consequent to its basic application being refused or cancelled within its first five years. The Trademark Registry in India has rigorous standards of examination and to a degree there is a lack of consistency in the examination pattern. This makes international applications originating from India more vulnerable to a 'central attack', adds Kumar 

"Difficulties also arise if the trademark is not equally allowable in all countries and needs country-specific tweaking or modifications. The same is also true for the description of goods as broad descriptions are permissible in some countries and narrow in others. If the trademark is in use in some countries and is 'proposed to be used' in others, the applicant faces a problem as Madrid calls for a uniform filing basis," says Shwetasree Majumdar, managing partner, at Fidus Law Chambers  Jackpot Stocks Trading Tips

Majumdar's advice to India Inc is: "To not take the cart before the horse! There are too many instances of the brand being launched first and then trademark clearance searches and filing exercises being undertaken. IP needs to be prioritized and secured before product launches take place". 

The cost factor also plays an important role, the Madrid route is more economical where trademark protection is sought in several countries. If trademark protection is sought in just 1-2 countries separate filings in each country may be cheaper. There is also a legal angle involved. Indian law is based on the concept of the 'first to use'. When looking at competing marks, when an application is received, the Trademark office looks at who commence use of this mark earlier, rather than who was the first filer for the mark. Paharia says: "Indian companies are more comfortable with this framework, filing under the Madrid route takes away the right of claiming use in applications Commodity Trading Tips