Wednesday, August 8, 2012

The Madrid Agreement And Madrid Protocol And Its Applicability And Implementation In India

Intellectual property rights in India cover areas like trademark, copyright, patent, geographical indications, etc. As far as the trademarks law of India is concerned, the Trade Marks Act, 1999 (TMA 1999) and the corresponding Trade Marks Rules, 2002 (TMR 2002) regulate the legal framework pertaining to trademarks in India. It also regulates the national and international trademark registration in India. The TMA 1999 also regulates the convention application under Indian trademark law.

Of late international aspects of brand protection and trademark protection have assumed a centre stage in India. Trademark and brand protection under new gTLDs registration by ICANN is a very challenging aspect. The most important question to be asked these days is whether your brand and trademark is violated by new GTLDs?

Another significant aspect of international trademark protection pertains to adoption and implementation of Madrid Agreement and Madrid Protocol. International registration of trademarks under Madrid Agreement and Madrid Protocol has attracted the attention of international companies and trademark stakeholders.  

However, India has still not ratified the Madrid Protocol and accession of the same is still pending in India. Although India has enacted the Trademark (Amendment) Act, 2010 yet the same has not been notified so far. In the absence of the same, the proposed Act has no value.

Answering to a question in Parliament of India in the current monsoon session (August-September 2012) of the Parliament, the concerned minister has informed that the accession (proposed notification of Trademark rules under the Trademark (Amendment) Act, 2010 would enable the Indian companies to register their trademarks in the member-countries of the Protocol through a single applications as well as allow foreign companies to register their trade marks in India, within a specific timeframe i.e. 18 months.

At present, there are 86 contracting parties to the Protocol. Under the Trademarks (Amendments) Act, 2010, the Head Office of the Trade Marks Registry (which is at Mumbai) or such branch of the Trade Marks Registry as the Central Government may by notification in the Official Gazette specify, will deal with the international applications.

However, so far the trademark registration in India is governed by the TMA 1999 and till the 2010 Act is notified the position would remain the same.