International Trademark Protection Under the Madrid Protocol

Introduction 

Chapter IVA of the Trademarks Act introduces special provisions for protecting trademarks through international registration under the Madrid Protocol. This chapter, covering Sections 36A to 36G, enables Indian businesses to seek trademark protection across multiple countries through a single application, while also allowing foreign entities to protect their marks in India.  

What is the Madrid Protocol? (Section 36B) 

• Section 36B defines the Madrid Protocol as the international treaty adopted in Madrid on June 27, 1989, which facilitates international trademark registration. The Protocol works alongside the Madrid Agreement of 1891, creating a unified system managed by the International Bureau of the World Intellectual Property Organisation (WIPO). 
• Key terms include "Contracting Parties" (countries or organizations that have joined the Protocol), "international application" (request for international registration), and "international registration" (registration recorded at the International Bureau). Understanding these definitions is crucial as they form the foundation of the entire international registration system. 

Applications Originating from India (Section 36D) 

• Section 36D allows Indian applicants who have filed an application under Section 18 or hold a registered trademark under Section 23 to file an international application. This "basic application" or "basic registration" serves as the foundation for seeking protection in other Contracting Parties. 
• The applicant must designate which countries they want protection in using the prescribed form. The Indian Registrar then certifies that the international application matches the domestic application or registration details, including dates and numbers, before forwarding it to the International Bureau. 
• A critical provision is the "five-year dependency rule" under Section 36D(5). If the Indian basic application or registration is withdrawn, cancelled, expired, or refused within five years of international registration, the international protection ceases to have effect. This creates an important link between domestic and international registrations during the initial five-year period. 

International Applications Designating India (Section 36E) 

• When foreign entities designate India in their international applications, Section 36E governs how these are processed. The Registrar maintains records of such international registrations and examines them just like domestic applications. 
• Under Section 36E(2), the Registrar has eighteen months from receiving notice to refuse protection if grounds exist under Indian law. The applicant must be given a hearing opportunity before refusal. If no objection is found, the registration is advertised as per Section 36E(3). 
• Importantly, Section 36E(4) applies Sections 9 to 21 (registration conditions and procedures), along with Sections 63 and 74, to international registrations. This means international applications face the same scrutiny as domestic ones regarding distinctiveness, deceptiveness, and conflicts with earlier marks. 
• Section 36E(5) provides that if no opposition arises and the eighteen-month period expires without the Registrar notifying refusal, protection is automatically deemed extended to India. This creates a streamlined process with clear timelines. 

Rights and Effects (Section 36F) 

• Section 36F(1) establishes that from the date of international registration designating India, the trade mark enjoys the same protection as if it were registered domestically. This principle of "equal treatment" ensures that international registrants aren't disadvantaged compared to domestic applicants. 
• However, Section 36F(2) clarifies that the applicant's classification of goods and services doesn't bind the Registrar, who retains authority to determine the protection scope according to Indian classification systems. 

Duration and Renewal (Section 36G) 

• Section 36G specifies that international registrations last ten years and are renewable for successive ten-year periods. A six-month grace period is available for renewal upon payment of a prescribed surcharge, providing flexibility to trademark holders who may miss the exact renewal date. 

Central Dependency Rule (Section 36E(8)) 

• Section 36E(8) mirrors the five-year dependency rule for incoming applications. If the foreign basic application or registration fails within five years, the protection in India also ceases. This reciprocal arrangement maintains consistency in the international system. 

Administrative Handling (Section 36C) 

• Section 36C designates that international applications are handled by the head office of the Trademarks Registry or specified branch offices, ensuring specialized processing of these applications. 

Conclusion 

The Madrid Protocol provisions create an efficient gateway for Indian businesses to expand globally and for foreign entities to enter the Indian market. By establishing clear procedures, timelines, and standards through Sections 36A to 36G, this chapter integrates India into the international trademark protection system while maintaining rigorous examination standards. This framework benefits businesses seeking international expansion by reducing costs, simplifying procedures, and providing centralized management of trademark portfolios across multiple countries.