In today’s age, brand protection is of utmost importance. Now more than ever, people recognize the value of protecting their brands even beyond the jurisdiction of their home country. While the process of securing trademark protection across multiple countries can appear onerous, the Madrid Protocol streamlines this process. The Madrid Protocol is an international trademark system that enables a trademark to be protected in several countries with a single application. As of date, a trademark can be protected in up to 131 countries that have become parties to the Madrid Protocol, making it convenient and easy to extend protection to several countries at once. For a comprehensive understanding of the Madrid System, you can read our blogs on the topic here and here.

To briefly detail the procedure, it entails filing an international application (‘IA’) for the registration of the trademark on the basis of an existing pending or registered trademark in the home country. Once the trademark office of the home country reviews the IA and verifies that it is in accordance with the laws and rules of the home country, it will be communicated to the International Bureau (‘IB’) of WIPO. Thereafter, the IB carries out a scrutiny of the IA, and if no irregularities are found, the IA will be published in the WIPO Gazette of International Marks, and the International Registration (‘IR’) will be notified to the trademark office of the designated member where protection is sought.

If India has been designated, the IB will notify the Indian Trademark Registry (‘TMR’) of the designation, and this date of notification is crucial. Moving forward, the IR will be treated similarly to an application filed directly in India and is allotted an International Registration Designating India (‘IRDI’) reference number. The IRDI application will be examined to see if it complies with the provisions of the Trademarks Act 1999 (‘Act’), much like a national application. The TMR has a period of 18 months from the date of notification to communicate either the provisional refusal or acceptance of the IRDI application. If there are grounds to refuse registration, then a provisional refusal is generated, and the status of the IRDI application changes to objected. Alternatively, if the IRDI application is accepted for protection, then it will be published in the Trademarks Journal. Thereafter, if the IRDI application successfully completes the opposition period without facing any opposition, the TMR shall within the 18-month period, notify the IB of the acceptance of extension of protection in India. In the event the TMR fails to notify the IB of such acceptance, as per Section 36E (5) of the Trademarks Act 1999, the IRDI application is deemed protected in India.

It is pertinent to note that the deeming provision under the Act is invoked only if the IRDI application has completed the opposition period successfully and the TMR fails to communicate the ‘acceptance’ to the IB. This position was confirmed by the Delhi High Court in the cases of Allergan Inc and Anr. v. Controller General of Patents Designs and Trademarks and Anr. and Bridgestone Corporation v. Controller General of Patents Designs and Trademarks and Anr. where two writ petitions filed by the respective petitioners against the orders of the TMR raised a common issue i.e., interpretation of Section 36E (5) of the Act vis-a-vis the applicability of the Madrid Protocol. The Court was of the view that the deeming provision under the Act applies where no opposition to the registration of the mark has been filed within the prescribed time and where the TMR has failed to communicate the same to the IB within a period of 18 months.

Notably, under the Madrid Protocol, the deeming provision is invoked based on a different criterion. As per the Madrid Protocol, where an office of a designated member has completed examination and finds grounds to refuse protection of the mark, the office must notify the IB of such provisional refusal within the applicable time limit. In the event that the office of the designated member does not issue any decision (ex-officio refusal or refusal based on opposition) before the expiry of the time limit to communicate such a decision, under the Madrid Protocol, the mark is deemed protected in that member country as per Article 4 of the Madrid Protocol. This is the principle of tacit acceptance. The implication is that in the absence of a notification of provisional refusal within the specified period, the mark is automatically protected in the member country. In essence, the principle of tacit acceptance ensures that the rights of the trademark holder are protected even if the designated member does not issue a decision within the required timeframe.

The Delhi High Court in the aforementioned case noted the difference in the language of the Act and the Madrid Protocol. The Court observed that under the Act, it is the failure to convey ‘acceptance’ that leads to such deeming extension of protection, whereas, in the Madrid Protocol, it is the failure to communicate ‘refusal’ within the prescribed time that shall result in the deemed extension of protection to the mark.

In conclusion, it is evident that there is a clear difference in how deeming provisions are applied to safeguard brand rights across jurisdictions. While both the Act and the Protocol aim to streamline and expedite trademark registration, their approaches diverge in how they handle the lapse in communication by the designated member country’s trademark office. As international trademark protection continues to evolve, staying informed about these nuances will play a crucial role in effectively managing and safeguarding one’s brand on a global scale.

Written By Vaniah Dominic