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

The Madrid Protocol came into force in India on 8th July 2013. Since then, international applications and registrations dated on or after this date can be designated in India from 115 Members of the Madrid Union, covering 131 countries.

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).

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  • If the basic registration (in a contracting party other than India) is withdrawn, cancelled, expired, or refused within five years of international registration, the protection in India also ceases to have effect.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