lawyers in India

Protecting Trade Marks: Madrid Protocol and India

Written by: Abhijit Mukherjee - Sixth Semester, University School of Law and Legal Studies, G.G.S.Indraprastha University, Delhi
Trademark Law
Legal Service
  • India has seen a rapid growth in its economic structure and one of the major reason being the global presence of the India companies and therefore it becomes utmost important to protect their 'trademarks' internationally. The present system which is provided under the Trade Marks Act, 1999, is lengthy and very costly. This has forced India to seriously consider accession to the Madrid Protocol. For this purpose it has been proposed to amend the Trade Marks Act, 1999 so as to incorporate therein a new chapter IVA containing special provisions relating to protection of international registration of trademarks under the Madrid Protocol, which would be discussed in detail, later.

    The Background of Madrid system

    The Madrid Protocol came into existence on April 1, 1996. The Madrid Agreement and the Protocol pertaining to it were adopted at the conference held at Madrid. The Madrid system is administered by the International Bureau of World Intellectual Property Organization (WIPO), Geneva. This system facilitates registration of trademarks in multiple jurisdictions across the world in the contracting parties i.e. it provides a mechanism for obtaining trademark protection in countries in the world. The system provides a structure for filing, registration and maintenance of trademark rights in more than one jurisdiction on a global basis. The Protocol has been of great significance, for example according to the protocol international registration can be obtained on a pending trademark application, that helps the proprietor of the trademark to apply for international registration after filing an application in the jurisdiction of the member countries simultaneously. Recent developments in international trade mark law were the accession of the United States and the European Union to the Madrid Protocol on 2 November 2003 and 1 October 2004, respectively. This makes the Madrid Protocol a success as most of the major trading companies are a party to it.

    An overview into the Madrid Protocol:

    The Madrid system provides for a mechanism of protecting the trade mark in different jurisdictions which are the member of the protocol. The useful feature of the system is that the protection can be extended to different jurisdictions, whenever new countries accent to the protocol.

    The system works in a unique pattern which is, the owner of the trade mark who has obtained the 'international registration' from WIPO may extend the protection afforded to the 'international registration' to different member's jurisdiction through a process called 'designation'. However it is important to note that that the registration with WIPO is a centralized bundle of individual national applications, which, after being examined by the national trade mark authority, translates into a 'national registration' i.e. the registration with WIPO is not a ' registration', ab-initio. Individual application is assessed, examined and reviewed under the national laws of the country and finally it is processed which usually takes 12 to 18 months. In case there is no refusal by the trademark office in designated country then, the protection of the mark is the same as if it had been registered by the same office. However if the application is refused or denied in any designated country timely action will be needed. Therefore, in case of filling in certain member countries can be an expensive and costly affair, as there could be a need to conduct simultaneous foreign inter-parties proceedings across the globe. Thus the cost factor which is minimal in the registration process can be outweighed in such conditions.

    The major disadvantage of the Madrid system being that, if the basic application or registration is being refused, withdrawn or cancelled within five years, that would lead to the refusal, withdrawal or cancellation of the international registration to the same extend. Additionally, in case of Central Attack, which results in refusal or cancellation of the registration within Five years in the home country, the entire international registration will be cancelled. The process of attacking/opposing the basic registration is commonly termed as Central Attack. Fortunately, there is a way out in such situations which provides for a three months grace period to transform the international registration into separate, series of national applications in each jurisdiction designated by the international registration. This process is called Transformation. However, it is to be understood that it is a costly affair and is generally used as last resort.

    The Indian perspective: Introduction of Trade Mark (Amendment) Bill, 2007, for inclusion of Chapter IVA

    The present trade mark law in India is of territorial origin and, thus, lacks international application. Unlike the patent laws, it is still not possible to register an international trademark. This is one of the important factors for India to show inclination towards accession of Madrid Protocol.

    Keeping in view the said purpose of accession, the Indian legislative bodies have proposed for introduction of the Trade Mark (Amendment) Bill, 2007, by which a new chapter IVA has been incorporated. The Bill was referred to the standing committee on commerce on October 1, 2007. The committee is headed by Dr. Murli Manohar Joshi, who is the chairman of the committee.

    The purpose of the Bill is to amend the trade mark laws in India so as to afford protection to the Indian trade mark in other countries.

    The major changes or amendment introduced can be summarized as follows:
    *The Bill prescribes a period of 18 months within which a trade mark has to be registered.

    * The Controller-General of Patents, Designs and Trade Marks is the Registrar of Trade Marks, appointed with any other officers deemed fit, by the central government. The Bill empowers the Registrar of Trade Marks to deal with international applications originating from India as well as those received from the International Bureau and maintain record of international registrations.

    * If an international registration originates from India the registered proprietor or applicant may make an international application on a prescribed form. If the person holds an international registration, he may make an international application on the prescribed form for such registration to any other contracting party.

    * Reduction of the time period of filling of notice of opposition of published applications to three months.

    * The Bill simplifies the provision related to transfer of ownership trade marks by assignment or transmission.
    If a person becomes entitled to a registered trade mark by assignment or transmission, he shall apply in the prescribed manner to the registrar to register his title. However applicant may be asked to furnish further evidence only where there is a reasonable doubt about the veracity of any statement or document.

    The implementation of the Madrid system in India will be accompanied by increase of staffs in Trade Mark offices, growth of IT infrastructure, trained professionals, etc, the possible consequence of such change in the structure will be increment in the cost of filling domestic applications. The local and the government trade mark attorneys may lose out to this change, as there is a considerable chance of reduction of local filings. To conclude it cannot be said that the only way out for protection of trade mark at international level is Madrid Protocol but it is the best available option at this present moment.

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