When the Indian Registry misses its 18-month deadline on a Madrid application, the mark can be “deemed protected” — but exactly what the Registry must have failed to do differs between Indian law and the Madrid Protocol. That difference decides whether a mark is safe.
The Madrid route into India, briefly
The Madrid Protocol lets a trademark be protected in up to 131 member countries through a single International Application (IA), filed off a home-country base mark. WIPO’s International Bureau (IB) examines and publishes the International Registration (IR), then notifies each designated office.
Where India is designated, the IB notifies the Trade Marks Registry (TMR), and that date of notification starts the clock. The application (an IRDI) is then examined like a national one, and the TMR has 18 months to communicate either a provisional refusal or acceptance.
India’s deeming rule: Section 36E(5)
Under Section 36E(5) of the Trade Marks Act, 1999, if the IRDI completes the opposition period without opposition and the TMR fails to communicate its acceptance to the IB within 18 months, the mark is deemed protected in India.
The Delhi High Court confirmed this in Allergan Inc. v. Controller General and Bridgestone Corporation v. Controller General: the deeming provision applies where no opposition was filed in time and the TMR failed to communicate acceptance within 18 months.
The Protocol’s deeming rule: Article 4
The Madrid Protocol works the other way round. Under Article 4, if a designated office finds grounds to refuse, it must notify the IB of a provisional refusal within the time limit. If the office issues no decision (neither ex-officio refusal nor refusal on opposition) before the deadline, the mark is automatically deemed protected — the principle of tacit acceptance.
The crucial difference
The Delhi High Court flagged the divergence in language:
- Under the Act: it is the failure to convey acceptance that triggers deemed protection.
- Under the Protocol: it is the failure to convey refusal that triggers it.
Same 18-month horizon, opposite triggers. For brand owners relying on tacit protection, knowing which test applies — and whether the opposition period is clear — is essential.
Practical guidance
- Diarise the 18-month notification date for every India designation.
- Confirm the opposition period passed cleanly before relying on Section 36E(5).
- Do not assume Protocol-style tacit acceptance maps onto Indian law — the Act keys off acceptance, not refusal.
Frequently asked questions
What is “deemed protection” for a Madrid mark in India? Where the opposition period passes without opposition and the Registry fails to communicate acceptance to the IB within 18 months, the mark is deemed protected under Section 36E(5).
How is India’s rule different from the Madrid Protocol? The Act triggers deemed protection on failure to convey acceptance; the Protocol (Article 4) triggers it on failure to convey refusal.
Which case settled this in India? The Delhi High Court in Allergan and Bridgestone interpreted Section 36E(5) against the Protocol.
What is the deadline for the Registry to act? 18 months from the IB’s notification of the India designation.
Useful official resources
- The Trade Marks Act, 1999
- WIPO — Madrid System