Trademarks – International Registrations Designating India (IRDI) under the Madrid Protocol

Key Requirements for IRDI

1. Declaration of Intention to Use

• A Declaration of Intention to Use the trademark in India is mandatory.

2. Appointment of a Local Representative

• A local representative must be appointed to handle official notices from the Registrar, such as:
• Notice of Provisional Refusal (on examination or opposition by third parties).
• Notice of Cancellation (filed by an aggrieved third party).

Rule 17 of the Indian Trademarks Rules 2017 stipulates the following with regard to “Address for service” —

(1) Every applicant or opponent or any person concerned in any proceeding under the Act or Rules shall furnish to the Registrar an address for service in India comprising of a postal address in India and a valid e-mail address and such address shall be treated as the address for service of such applicant or opponent or person.

Unless an address for service in India as required in sub-rule (1) is given, the Registrar shall be under no obligation to send any notice that may be required by the Act or the Rules and no subsequent order or decision in the proceedings shall be called in question on the ground of any lack or non-service of notices.

It is recommended that the Applicant of an International Registration (IR) Designated in India should appoint a local attorney/agent for the mandated address for service in India, after designating the IR in India, rather than after receiving a Notification of Provisional Refusal, to ensure that Notices issued by the National Office are communicated to the local address for service and for necessary relief in case of any miscommunication.

Provisions Governing International Registrations Designating India (IRDI)

1. Examination & Provisional Refusal

• The Registrar must either accept the IRDI or issue a Provisional Refusal within 18 months from the date of notification by the International Bureau (IB).
• If a Provisional Refusal is issued, a response must be filed within one month (or within an extended period if permitted by the Registrar upon payment of a fee).

2. Hearing & Acceptance

• A hearing may be scheduled (with prior notice) before an order of acceptance or final refusal is issued.
• Upon acceptance, the IRDI is published in the Trade Marks Journal.

3. Opposition & Final Acceptance

• If no opposition is filed within the prescribed period, the Registrar will notify the International Bureau (IB) regarding the extension of protection.
• If the Registrar fails to notify the IB, protection is deemed to be extended to the trademark in India.

4. Appeal Against Final Refusal

• If the Registrar refuses protection, the holder may file an appeal before the High Court within three months of receiving the order.

5. Legal Effect of IRDI Protection

• From the date of the IRDI (or the date of recording by the IB), the protection granted in India is equivalent to national trademark registration.
• The indication of classes of goods and services by the applicant does not bind the Registrar in determining the scope of protection.

6. Duration & Renewal

• Protection period: 10 years from the application date.
• Renewal: Can be renewed for additional 10-year terms before the expiry of the current term.

7. Dependency on Basic Registration

• If the basic registration (in a contracting party other than India) is withdrawn, cancelled, expired, or refused within five years of international registration, the protection in India also ceases to have effect.

Restrictions on IRDI

• Division of an IRDI is not possible.
• Merger of multiple IRDIs is not allowed.
• Transformation of an IRDI is currently not provided for under Indian law.