Accession to Madrid Protocol announced

India

Six years after ratifying the Madrid Protocol, India has finally completed the accession process: the protocol will be effective in India from July 8 2013. India is the 14th of the G20 economies to accede to the Madrid Protocol; its accession follows that of Colombia, Mexico, New Zealand and the Philippines, thus representing a significant geographical expansion of the Madrid system.

Following ratification of the protocol in February 2007, India paved the way for implementation by amending its trademark laws and introducing the Trademarks (Amendment) Act in 2010. However, because of the backlog at the Trademarks Office, and due to the procedural changes required to comply with the timelines laid out in the protocol, implementation was deferred. Given the problems that still exist in this regard, many practitioners and IP holders were surprised when the Commerce and Industry Minister handed over India’s instrument of accession in Geneva on April 9.

While accession to the Madrid Protocol will undoubtedly benefit both Indian and foreign trademark owners, there are concerns that the Trademarks Office will not be able to comply with the strict timelines provided for in the protocol. In particular, the backlog at the office is still a cause of concern. Although several projects to reduce the backlog have been initiated in recent years, including the digitisation of records, the backlog has continued to increase due to a lack of manpower and the rapidly increasing number of applications being filed.

It will be interesting to see whether the Trademarks Office is able to complete the trademark registration process within the 18-month period provided for in both the Madrid Protocol and the amended Trademarks Act.

Ranjan Narula, Ranjan Narula Associates, New Delhi

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