The Implementation Of Madrid Protocol In The Trademark (AMENDMENT) Bill, 2009
Author – Bharat Sharma, Charu Joshi
Re-introduced in 2009, The Trademark (Amendment) Bill, 2009 sought to make the trademark regime in India complaint to international existing standards in Trademark in order to streamline the process of cross border applications through and from India. The Patent Corporation treaty (PCT) filing system is a similar existing system to which India is complaint, in the field of patent.
The basic purpose that the bill fulfilled was the implementation of the Madrid protocol in India. The Madrid protocol is a system dealing with trademarks globally. A single application filed in a country paves way for the applicant to apply in 123 member countries.
Therefore, it allows a centralized system to renew, expand or modify an application. Before filing an international application, the applicant should have a ‘basic mark’, which is applied for protection in the applicant’s home IP office. Once the international application is filed with WIPO, it is examined and recorded in the International Register upon its approval. The application is then published in the WIPO Gazette of International Marks. WIPO also notifies the home IP office of the various jurisdictions where the applicant seeks protection.
In accordance with the local laws of the territories where the applicant has applied for protection, usually, a decision is made by the respective offices within 12-18 months. Also, the refusal of the mark in one territory has no effect on the decision of the offices in other jurisdictions.
Further, the applicant has the benefit of filing in one language. The granted protection lasts for 10 years, subject to renewal directly with WIPO in the contracting parties. This system allows an applicant to file an application directly with Madrid protocol and select India as one of the countries where she seeks protection, thereby saving filing costs and time.
Madrid system is a win-win for the trademark holders in India and also for those who wish to seek protection across boundaries. It has also reduced attorney fees and transaction costs.
The major changes brought by the amendment are that the in addition to the NICE classification (international classification of goods and services established by NICE agreement), a class wise and alphabetical index of goods and services (including such goods and services of Indian origin) will also be published by the Registrar. Further, the registration of textile goods with exclusive numerals has been done away with.
The new system allows opposition to be filed within 4 months from the date of advertisement or re-advertisement, doing away with the filing of an application for extension of one month before the expiry of initial three months period. The uniform system also helps in avoiding conflicts between the territorial laws that lead to unnecessary procedural and legal hurdles.
The amendment has introduced Chapter IVA (section 36A to 36G) in the Trademarks Act. The chapter sets the procedural and statutory requirements for international registration of marks. Under the new provisions, an international application is dealt with the trademark registry, as specified by the government.
For an international application originating in India, the applicant has to apply to the form prescribed under the Madrid protocol regulations. Similarly, the applications for extension of protection are also dealt with common regulations under the Madrid protocol.
The registrar has to certify that the particulars in the international application correspond to the application under section 18 (application for registration) or section 23 (registration). He/she then transfers it to the International Bureau for registration, indicating the date of the international application.
If the application in India, made under section 18 or 23 is withdrawn/cancelled or has expired before 5 years of its international registration, the international registration ceases to have effect and the trademark is no longer protected. The Registrar has to update the International Bureau of the same.
For international registrations which are designated to India, the Registrar receives advice from the International Bureau about such application for registration. The Registrar, complying with the Indian Trademark Law principles have to keep a watch whether the sought trademark by the applicant is suitable for registration. Upon scrutiny, protection may be granted or refused to the international applicant within a period of eighteen months and the same is informed to the International Bureau of the same.
If the Registrar finds no grounds for refusal, he allows the registration to be advertised and the application is treated at par with the application made under section 18 of the Trade Marks Act. If no opposition is filed within 18 months from the receipt of advice and the time period to file an opposition ceases, the protection is deemed to be granted to the international registration.
The international registration holder whose application has been refused has the same remedy as an applicant under section 18 whose application has not resulted in registration under section 23 of the Act. The protection of international trademark in India from the date of his international registration is the same as that of an Indian applicant whose mark has been registered in India.
Problems faced and way forward
Although the Madrid system is pretty effective, there are certain drawbacks associated with the same. Countries have different procedures for trademark prosecution and their judicial systems have set differing standards with respect to protection being granted.
Under the Trademark Rules, the applicants are supposed to have an address for service in India, which in a way leads to foreign attorneys seeking assistance from local attorneys, again, leading us back to the system that existed before the amendment of the Act. Nevertheless, the trademarks office has been working dynamically in the past years. As the regime expands, these issues will be taken care of by making necessary amendments to the existing rules and regulations.