Tuesday, March 22, 2011

India s Accession to Madrid Protocol

India’s Accession to Madrid Protocol- A new arrow in the quiver of Indian Trademark Law
ONE application, in ONE place with ONE set of documents in ONE language with ONE fee in ONE currency resulting in ONE registration with ONE number and ONE renewal date covering more than ONE country [1]
In essence, this is what the Madrid Protocol aims to achieve while providing for international registration of trademarks. In India there is no system yet wherein a single trademark application is sufficient to protect the trademark right internationally. At present, a person desirous of obtaining registration of his trademarks in other countries has to make separate applications in different languages and pay different fees in the respective countries. There is no provision under the Trademarks Act, 1999 to facilitate Indian as well as foreign nationals to secure simultaneous protection of trademarks in other countries. On 8th February 2007, the Union Cabinet ratified India’s accession to the Madrid Protocol, which will provide extensive protection to Indian trademarks overseas and facilitate foreign firms to file their trademarks in India.[2] “The accession would facilitate speedy registration of Indian marks in different markets worldwide and promote business confidence in the Indian Intellectual Property Rights system globally”, Finance Minister P. Chidambaram told reporters after a meeting of the Cabinet Committee on Economic Affairs (CCEA) on the same day. However, India has clearly specified that it intends to join the Madrid Protocol for the international registration of trademarks and not the Madrid agreement (difference between the two discussed further). The Union Cabinet gave its approval for India’s accession to the Madrid Protocol in February 2007. Steps are now being taken to amend the Trademarks Act 1999 and hence a Bill has been introduced in the Parliament to start the necessary procedure for accession to the Protocol. The Indian Trademarks Rules, 2002 will also be amended pursuant to the amendments in the Trademarks Act, 1999.

India’s accession to the Protocol - Pros & Cons
The Indian trademark practice of filing applications in each country for registration and tracing them simultaneously is quite time consuming and expensive. For that reason, it is a boon for India that it has become a member of the Madrid system, and we should realize the advantages of the same since it enables an applicant company seeking international registration to file only one application and pay only one fee in local currency.
The trademark protection under Madrid Protocol may be extended to additional jurisdictions at any time, as and when they join the Madrid system. A mark registered under the Madrid system is deemed to get the same protection as if it is being directly registered in each country. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that office.
It is also pertinent to note that under the Madrid system the applicant can make any change of name, address and so on and so forth and also renew the registration across all applicable jurisdictions through a single administrative process.
The pharmaceutical industry is the major beneficiary of India’s decision to join the Madrid Protocol and the benefit derived by the Pharmaceutical industry is also seen to have percolated to other industries such as Coffee, Tea, Cocoa and Electronic industry[3]. Though the corporate houses are set to gain a lot by this step taken by India but it will not be so for the small sector industries owing to the high cost involved in registration.
Another major criticism is that the Madrid Protocol still retains ‘dependency’ of the international registration on the existence of the basic registration. Although under the Madrid system the number of international registrations subjected to a central attack is less than 1%[4], there seems to be a lack of policy consideration behind inserting such a provision. This is especially so when each national office has been given sufficient time to enable them to invalidate trademarks based on their domestic law, including opposition proceedings.
Further, if the registration in India is invalidated on the ground that the trademark is in violation of an earlier mark,[5] then the impugned mark automatically loses its protection in other countries even if the infringed earlier mark did not even exist in that other country!!! However, the risk of central attack is mitigated by the introduction of the possibility of “transformation”. Thus, the filing date of the international registration will be maintained. Although, the Protocol mitigates such attacks by way of the principle of transformation, transforming the application into a direct national application may be more costly and time-consuming than filing separate national applications[6].
In the fairness of the scheme, it seems beneficial for India to have joined the Madrid Protocol and help Indian business community to get international registration of their trademarks at affordable cost and on a time bound manner. However, infrastructure and the resources available to Indian trademark registry need to be strengthened and training has to be imparted to the officials of Trademarks Registry to be able to handle such international applications. Similar training is also desirable for the legal fraternity with assistance from WIPO.
It is often found that the filing rate is quite high in case of member countries having depository system as against the countries which follow comprehensive system of examination of applications for registration of trademark. Accordingly, the filing rate of application for registration of trademarks in India is quite high and the infrastructure and resources available with the Indian Trademark Registry are insufficient as compared to other countries having lesser or same filing rate.  Although the Indian Trademark Registry has cleared the backlog of five years by ad hoc measures so that it could be in a position to join Madrid Protocol, yet it needs a long term strategy so as not to allow the backlog to resurface since the human mechanism cannot be sustained for long. This requires strengthening of the infrastructure and raising IT level supports[7].
The IT system in the Indian Trademarks Registry needs a holistic revamping for which strong support is needed from Indian Government and WIPO, together with the assistance of a team of dedicated officers. As of today, the working strength of officers therein is sufficient to discharge the day to day statutory duties. If these officers are diverted, a strong possibility of the backlog resurfacing exists. A solution for this is to hire experts from technical as well as legal fields.
It is often debated that the concept of e-filing cannot be achieved by India. But the Intellectual Property Offices in India have commenced e-filings of patents and trademark applications. Now applicants can file their patent and trademark applications from anywhere in the world at any time as per their convenience with the help of the internet. Payments can also be made through the Payment Gateway of authorized bankers, which will save time and money and the hassles involved in visiting and filing the applications in the offices[8]. A major program of modernization of the infrastructure of Intellectual Property offices of India costing Rs. 153 crore was implemented during the 10th Five Year Plan. Computerization has been one of the key components of the modernization initiative. As part of this, facilities have been created for e-filing of patent and trademark applications[9]. Soon, the complete process of grant of patent or registration of trademarks will become online and the Indian Patent and Trademarks Offices will function almost as paperless offices. The modules for the e-filing and online processing have been developed by the National Informatics Centre. Thus with the launching of the e-filing facility the first phase of the modernization drive comes to an end.
Factors like difficulties over delay and the differences in level of strictness of Indian Registries compared to their foreign counterparts are such that can have serious implications in India while implementing the Madrid Protocol. There would be a penalty on Indian trademark owners if the Indian trademark registry does not transmit and ensure receipt of their international applications by the International Bureau within two months of filing. In such an event, instead of the date of filing, date of receipt by the IB would become the date of the international application. If the Indian trademark registry does not expedite its processing it would put its nationals at a relatively disadvantaged spectrum since offices of other countries work faster.
It is also notable that to oppose the extension of international applications into India, notice of publication of both, international registrations and of recordals of extension, would have to be taken from the Gazette of the International Bureau even though it warrants that a few copies shall be furnished to the Indian trademark registry. From the date of the international registration or recordal in favour of a foreign trademark, its protection in India will also commence as if the mark had been deposited directly with the Indian trademark registry. This will require the Indian trademark owners to engage internationally savvy trademark agents. Though this step would result in a burdensome expense for some Indian trademark owners yet, it is necessary so as to safeguard their rights.
The Bill provides that the Indian Registrar of trademarks will be empowered to take up applications from the countries that are the part of this Protocol; But this sure to become an additional burden for the Registrar of Trademarks Office. Further, no clear procedure has been laid down in the Bill regarding the processing of the international and domestic applications.
Further, the Bill also fails to look into the aspect of providing protection to the non-visible marks. In the present scenario, protection of these non-visible marks has gained a lot of importance on the international front. But the proposed Bill does not contain any references about this new emerging branch of trademark.

Conclusion & Suggestions
Even though the Trademarks (Amendment) Bill, 2007 is pending before the Parliament for consideration, India still has to bring several changes in the existing infrastructure. In this regard, we can take a clue from South Africa. In September 2003, South Africa approved the ratification of the Madrid Protocol but temporarily suspended their accession to the Protocol. This was done with a view to allow the Companies and Intellectual Property Registration Office (CIPRO) time to reduce the period of examination of trade mark applications before the Protocol kicked in. This was done so as to reduce the backlog of trademark applications awaiting examination. However, when we think of India, we have to admit that we have not given enough thought to this particular aspect while implementing the Madrid Protocol even though India has no better record than South Africa in the time taken for examination of applications.
Accordingly, before implementing the system care should be taken as regards the possible ways to reduce the backlog of applications already awaiting examination as well as the time taken by the trademark office in examining these applications. It is submitted that if the delay in examination of application is not reduced, considerable loss would have to be borne by the Indian proprietors.
I would like to put forth a few suggestions which might help us to cope better with the changes that will be brought about by the Amendment in the Trademarks Act, 1999. These suggestions are :-
·         Update the government website and have facilities for online make trademark search
·         Make trademark journals and records of the already registered trademarks available online.
·         More IT trained personnel should be inducted and there should be a complete computerization of records besides making substantial additions to the main infrastructural facilities.
·         The Indian Trademark Journal should contain special issues dealing with Indian marks that should be made available in the Gazette of the International Bureau so that engaging of internationally savvy trademark agents can be avoided and thus, the time and cost involved can be reduced.
·         An additional provision should be added in the Bill by way of which the definition of goods and services in the Bill would comply with the provisions of the NICE agreement.
·         The concept of non-visible marks and their protection should be included in the proposed bill.
·         The e-filing system should be started in full-fledged manner and it should not remain merely on paper.
·         Government should provide funds for modernizing the IP infrastructure. For that requisite funds should be allocated and provided for in the country’s annual budget
·         Provisions should be included in the Bill regarding the procedure of international registration.

Now that India has acceded to the Madrid system, major changes (as specified above) in the prevailing Indian trademark registration regime are warranted, which India is already in the process of adopting. Thus, the step taken by India of acceding to the Madrid Protocol could not have been more appropriate than anything at this point of time, with more and more Indian companies going global.

References :

[1] The Madrid system for international registration of marks, (International Trademarks Association, New York) 2000, p.8, http://www.inta.org/ (10 October 2007)

[2] “India accedes to Madrid Protocol on trademarks protection”- THE HINDU- Online edition of India’s National Newspaper, Friday, Feb 9, 2007.

[3] Should India join Madrid Protocol, K.K.Sharma, Advocate and IPR consultant, Halsbury’s Law, March 2008.

[4] Protecting your trademark abroad: 20 questions about Madrid Protocol (WIPO, Geneva) 2001, at p.13.In 2000, nearly 23000 international registrations were effected; during the same period, only 140 international registrations were cancelled (in whole or in part) as a result of the central attack.

[5] Trademarks Act 1999, sec 33

[6] Celedonia Baila.H. & Epstein Jeffrey H, Limitations of the Madrid Protocol for US companies, Practising Law Institute: Patents, Copyrights, Trademarks and Literary Property, Course handbook series, 387 (1994), 257-284

[7] Online registration of trademark applications in all the regional offices and headquarters has begun from October 2002 and a digital database library on CD-ROMs of 150000 Trademarks Certificates and 1250 Trademarks Journals has been created.

[8] India to file application for ISA and IPEA recognition soon,- Kamal Nath launches e-filing of patent and trademark applications. The Hindu, 20 July 2007. Shri. Kamal Nath, the former Union Minister of Commerce and Industry, has launched the e-filing of patent and trademark applications, at the function oraganised by the Department of Industrial Policy and Promotion(DIPP).

[9] There are only a dozen or so countries which have e-filing facilities at present and India now gets into this elite group consisting of countries like USA, Japan, South Korea, China and the European Patent Office.

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