International Trademark Registration (Madrid Protocol)

The International Trademark India registration is governed by the Trade Marks Act, 1999 and the Trade Marks Rules, 2017, which incorporate the Madrid Protocol provisions. The Madrid Protocol is an international treaty administered by WIPO, and India acceded to it on 8 July 2013. The relevant sections of the Trade Marks Act include Section 36A to 36G, which deal with international registration of marks.

The application for International Trademark India is filed through the Indian Trademark Office (ITO), which is under the Controller General of Patents, Designs and Trade Marks (CGPDTM), Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry. The official website for filing and information is www.ipindia.gov.in. The Madrid Protocol application is submitted electronically via the e-filing system of the Indian Trademark Office.

The process for International Trademark India registration under the Madrid Protocol involves the following steps:

1. Basic Application or Registration: The applicant must have a pending trademark application or a registered trademark in India (the basic mark).
2. Filing International Application: The applicant files an international application with the Indian Trademark Office, which certifies the application and forwards it to WIPO.
3. WIPO Examination: WIPO examines the application for formalities and publishes the mark in the WIPO Gazette of International Marks.
4. Designated Country Examination: Each designated country examines the application according to its national laws and may grant or refuse protection.
5. Notification of Refusal: If a designated country refuses protection, it notifies WIPO, which informs the applicant.
6. Registration and Renewal: If no refusal is issued within the prescribed period (usually 12 or 18 months), the mark is protected in that country. The international registration is valid for 10 years and can be renewed.

The key forms for International Trademark India registration under the Madrid Protocol include:

• Form MM2(E): International application under the Madrid Protocol.
• Form MM4: Subsequent designation.
• Form MM5: Request for renewal.
• Form MM6: Request for change in ownership.
• Form MM8: Request for limitation of goods and services.

These forms are available on the WIPO website and the Indian Trademark Office portal.

To file an International Trademark India application under the Madrid Protocol, the applicant must:

• Be a national, domiciled, or have a real and effective industrial or commercial establishment in India.
• Have a basic application or registration with the Indian Trademark Office (the basic mark).
• The basic mark must be for the same goods or services as the international application.
• The applicant must be the owner of the basic mark.

The timeline for International Trademark India registration under the Madrid Protocol varies depending on the designated countries. No specific time estimates are provided as court and examination periods are unpredictable. The process involves WIPO examination, publication, and examination by each designated country. Applicants should expect a period of several months to a few years for complete protection.

The fees for International Trademark India registration under the Madrid Protocol consist of:

• Basic fee: 653 Swiss francs for a black and white mark, or 903 Swiss francs for a color mark.
• Supplementary fee: 100 Swiss francs for each class of goods/services beyond three.
• Complementary fee: 100 Swiss francs for each designated country (if the country does not have an individual fee).
• Individual fee: Varies per designated country (e.g., US, EU, etc.).

These fees are payable to WIPO. The Indian Trademark Office charges a transmittal fee of Rs. 4,000 (approx.) for forwarding the application. The table below shows the WIPO fee structure: