The Madrid Protocol: Passage to India Now Open

We previously reported that India was scheduled to become the 90^th member of the Madrid Protocol Concerning the International Registration of Trademarks (the “Protocol”).  We noted that this was a gratifying prospect, since India’s National Trademark Office is notoriously overburdened and slow-moving.  Under the Protocol, a country is typically required to examine a registration request within 12-18 months.  If the country does not raise any objections within this period, the mark is deemed registered in its territory.  In other words, the Protocol provides an incentive for timely examination, and creates a situation in which national inertia is on the side of the applicant.

India’s accession to the Protocol took effect on July 8, 2013.  There has been no word yet of any problems.  However, concerns have been voiced.  India’s Trademark Office continues to be understaffed, employing only half of the personnel deemed necessary for optimal functioning.  In the past, the Trademark Office has been plagued by paper jams, lost files numbering in the thousands, and even alleged criminal corruption among its directorate.  As a result, it has typically taken 3-5 years for an Indian registration to issue, and even longer if objections are raised.  In fact, objections are often raised, many of which have been deemed trifling or superfluous.  In view of these long-standing problems, some have feared that India’s accession to the Protocol was premature.

Others have been more optimistic, noting that the Protocol is a completely online system, avoiding the masses of paper files that have been the bane of the Trademark Office’s existence.  They have also noted that the terms of accession prevent India from being added as a “subsequent designation” to International Registrations that were filed before July 8, 2013.  In other words, India can only be designated in IRs filed on or after July 8th, a circumstance which may result in a more manageable workload, at least initially.

At present, we can only continue to wait and see.  Keep reviewing this blog for further updates on whether Protocol membership leads to evolution or devolution in India’s trademark system.  In the meantime, there is no reason for US trademark owners to avoid the Protocol route if they seek a passage to Indian trademark registration.