RESULT OF INDIA’S ACCESSION TO THE MADRID PROTOCOL ON TRADEMARK REGISTRATION AND PROTECTION

ABSTRACT

India has been a part of many treaties and conventions when it comes to forwarding it role in the international market. It has always been aware of its duties and commitments in the international market. India has signed and been a party to many international treaties. It has acceded to a number of treaties when it comes to furthering its role in the roots of Intellectual Property. In this paper we are going to scrutinize the Madrid system which was adopted by India to make it easier for the Indian companies to get their trademark registered globally. How adopting this protocol has changed the course of registration of trademarks in India. To cater to the Madrid Protocol two major treaties were signed by India. One – “The Madrid Agreement concerning the international registration of marks” (briefly known as the Madrid Agreement); Two – “The Protocol relating to the Madrid Agreement” (briefly known as the Madrid Protocol). When India undertook and adopted the Madrid System in 2013 it has brought about some significant changes in the trademark registration system. In this research paper my goal is to analyze the Madrid System and its impact on the Indian trademark registration system. Aiming to recognize the importance of Madrid system in today’s IP domain, I have tried to gather information through and knowledge to clearly understand its role and impact.

KEYWORDS

Trademark, Madrid Protocol, Registration of trademark, International Registration, Indian trademark.

INTRODUCTION

In India registration of trademark is not mandatory. However, it is considered to be beneficial and protective for individuals and business to get their trademark registered. In the present scenario there is an increasing infringement and tons of cases are challenged so it is advisable to get a trademark registered. There are a number of benefits that come attached to registration of a trademark like protecting the rights and interests of any individual or business, gives legal ownership, helps in preventing infringement, and the major being brand building. Any company or business is recognized by its logo or a design we call trademark. Trademarks can help a business to identify and differentiate what they make or what service they provide, from other competitive brands. Businesses can become more recognizable and attractive to consumers through the use of their exclusive names, logos and other branding elements. No other businesses will be permitted to use such elements if they are protected by trademarks. Hence a trademark is defined as a mark that is capable of bring distinguishing the goods and services of one person from another.

The laws of trademark in India can be tracked back to several millennia. India’s statutory law on trademarks law dated back to 1860. There was no official law relating to trademark in India, prior to borrowing the British Trademark Act 1938 and preparing the first Act on the subject as the Trademark Act of 1940. There was an increasing growth of trade and commerce which lead to the replacement of this Act to The Trademark and Merchandise Act 1958. This Act provided for better protection of trademark and focused more on getting a trademark registered. It also aimed to prevent the use of fraudulent marks on merchandise. Later on the Trademark and Merchandise Act of 1958 was replaced by the New Trademark Act in 1999 which came into effect in September 2003. The major reason behind this replacement was to align India’s trademark laws with international standards and obligations, and to modernize the legal framework for trademark registration and protection in India. The Trademark Act of 1999 brought about some major changes. It enlarged the definition of trademark by including shape of good, packaging and combination of colors which now can be adopted as a trademark. The 1999 act provides for registration of services, collective marks as a trademark. It also provides for a more simplified process of getting a trademark registered by adopting a single register of trademarks. The 1999 Act was enacted so as to comply with the provision of TRIPS (Trade Related Aspects of Intellectual Property Rights) Agreement. Other than this the act also provided for the establishment of an Intellectual Property Appellate Board for the speedy disposal of appeals. [i]

Initially, if a trader or business wanted to get their trademark registered in different nations then they had to file a separate application in that particular country to attain international registration of their trademark. After the Madrid Protocol the system has changed and attained a more convenient way of getting a trademark registered internationally. When India adopted and signed up for the Madrid Protocol in 2013, the chaotic system of international registration was replaced by a simplified and easier system. To attain the broad view on the Madrid protocol in India we shall dive deeper into what it is? How it has impacted the filing system in India? What are the positive and negative impacts of this system on India?

RESEARCH METHODOLOGY

This research paper is descriptive in nature and the research is primarily based on the assistance of various written articles, official papers, research papers and blogs, and write ups of different authors. So this research is based on secondary sources and provides deep analysis of the results and impacts of the Madrid system on Trademark Registration in India. With the help of the secondary sources mentioned above various points mentioned in the periodicals were taken into consideration to curate this research paper.

REVIEW OF LITERATURE

To write this research paper I had to understand the current system of registration of trademark that prevails in India. I had to deeply analyze the registration system of trademark that existed prior to India’s accession of the Madrid Protocol. Several articles were referred to come up with a comprehensive understanding of international registration of Trademarks for Indian traders. This research paper provides a comparative study of registration of trademarks before and after the Madrid Protocol in India and aims to give out a descriptive study of its impact.

METHOD

The method of research is comparative, descriptive and analytical.

MADRID PROTOCOL – AN EASIER WAY TO REGISTER A MARK [ii]

The Madrid Protocol is a filing or procedural treaty and not a substantive harmonization treaty. It was curated to provide a user friendly, cost-effective, efficient, and centralized way for trademark owners – traders, individuals and businesses— to obtain protection for their marks in multiple countries at once by filing only one international application with the applicant’s office of origin, in one specific language, with a single set of fees, in one currency.

The Madrid Protocol is the one step solution for all the trademark owners to protect their brand abroad. It is administered by the World Intellectual Property Organization (WIPO). There are around 130 countries, who are a party to this agreement. If any member of this agreement wants to get their trademark registered internationally, such member can do so in one single application. The trademark of such a member shall get their trademark registered in all the countries who are a part to this agreement. [iii]

India became a member of this agreement in 2013, which certainly lead to certain amendments in the Trademark Act 1999. The Amendment of 2010 added chapter IVA containing some special provisions related to international registration of trademark under Madrid Protocol. This chapter mentions all the necessary details important for a trademark owner like the effect of international registration, duration or time period, renewal process for an international trademark registration etc.

Prior to India becoming a party to the Madrid agreement, all the traders who wanted to get their trademark registered in various countries had to file for a separate application in each country. The Madrid agreement removes this long and tedious procedure and replaces it with one single procedure to get one’s mark registered internationally. The get an Indian trademark registered, an international application can be filed online at the IP India website. The international application is examined by WIPO and after the examination the process of registration and publication is followed. If no member country takes any objection to a trademark getting registered in their country, then a trademark gets registered in all the member countries.

FILING PROCEDURE BEFORE AND AFTER THE MADRID PROTOCOL IN INDIA[iv]

Prior to the Madrid protocol, India followed a tedious system of international registration. Any trader who wanted to get his trademark registered in India needed to file for an application with the trademark registry under the provisions of India’s Trademark act, 1999. After filing, an examination was conducted and if the application was found to be acceptable then the mark was published in the Trademark Journal for a duration of 4 months, during which all the parties, interested in opposing the registration were given an opportunity to do so. If there was no opposing by anyone then the trademark got registered and a certificate of such registration was issued to the applicant. Such a trademark acquired protection in India. For any foreign applicant who wanted to get his trademark registered in India had to hire an attorney to do so on his behalf. So, we can see that the international registration process was based on national application and there was no single and specific provision for international registration under a single application.

After India’s accession to the Madrid Protocol, the international registration became simplified. For getting an international registration of your trademark you’ll have to file an application with the International Bureau (IB) along with the details as per your application in India and then you can choose among all the 130 countries who are the members to the Madrid protocol to file your application. Each and every country you have selected to get your trademark registered in shall receive your application, and shall treat such as application as it was filed in their countries directly. The examination for distinctiveness and other related examinations of your trademark shall be carried out with the laws of those countries and not your home country (in this case India).

When you register with the IB it becomes easy for you to make requests like change in your name, address, renewing your trademark, etc. as all of this can be done in a single application in multiple registered countries. Prior to Madrid agreement the applicant was to file a separate application for applying in various countries whereas now the applicant can do so in multiple countries by making a single application. [v]

IMPACT OF INDIA’S ACCESSIO TO THE MADRID SYSTEM[vi]

The expected impact of the international registration of marks on the Indian domestic market was that India shall welcome the international registration of trademarks under the Madrid system and that there would be a coordinate with the Indian laws on Intellectual Property with the international trends.

POSITIVE IMPACT OF MADRID SYSTEM IN INDIA

It has given Indian trademark seekers a centralized system for registration:

Before the Madrid protocol India didn’t have centralized system for international registration of trademarks. The whole system of getting a trademark registered internationally was exhaustive and extensive in nature. But thanks to the Madrid Protocol agreement which replaced this extensive system with a centralized one for India. Now a person can get his trademark registered internationally and gain protection in any of the member countries of his choice through one single application and with a single set of fees.

Commodious and cost saving method :

The Madrid protocol puts forward a cost advantage for all the Indian trademark owners. Through filing a single international application, an applicant can save a great deal on filing fees and other related costs like administration expenses affiliated with multiple national applications. This a major advantage for all the medium-sized enterprises (SMEs) as it saves a great deal of cost on international trademark registration for them. Even the individual trademark owner’s benefit from this system as it gives trademark protection in multiple countries at once by paying a single set of fees. It gives Indian traders an opportunity for enhancing their brand in the international market. A simple way to understand this point is ‘huge recognition more protection, less cost’.

Flexible for trademark owners to manage their international trademark portfolio:

When you register your trademark internationally under the Madrid protocol system in a few countries who are the member countries and later you decide to get it registered in more countries who also are the member countries, you can do so easily. So you can expand your protection rights to additional member countries after the initial international registration. It provides for an easy and straightforward procedure of expanding protection to new markets as and when the business grows.

Boosts global brand presence:

After the accession to the Madrid protocol Indian brands got a chance to expand their name more efficiently and easily in the international market. With a more simplified and cost efficient process Indian businesses were able to create their mark in different countries. Since the Madrid Protocol it has been easy for the Indian trademark owners to grab more investment opportunities and to make a reputation in the international market. According to the statistical data, 44,018 applications were filed for international registration of trademarks under the Madrid system in the year of 2012, making a growth of around 4.1% over the year of 2011. This statistical information was released by WIPO at a March 2013 press conference. This is a proof that after India’s accession to the Madrid system, Indian trademark owners in order to boost their reputation in the international market are filing more applications as it provides for an easy and cost efficient method. This stands as one of the biggest advantages of the Madrid system in India.

Smooth Administrative Procedure:

The Madrid system has brought about a very smooth and centralized procedure as compared to the previous system of international registration in India. With the current system one can reduce paper work and improve efficiency. The new system makes sure that there is consistency in the examination procedure for handling and managing the international registrations.

Enlarges the platform for foreign trademark owners:

The Madrid system benefits foreign trademark owners who aim at seeking protection for their trademarks in India. Today, any foreign trademark owner can file an international application with their home trademark office and include India as one of the countries they want protection rights in. Due to this simplification, foreign countries are encourages to make their trademark registration in India and get their rights protected. This further promotes economic growth and foreign investments which add up to the benefits of the country.

Correspondence of trademark laws:

After joining the Madrid Protocol, we can see that India had to align its trademark laws and international registrations procedures with the international standards. This system has changed and amended the laws for good, as now there is greater correspondence with other international systems. This way the system has enhanced consistency and coherence in India, by the way of increasing legal certainty and by reducing most of the complexities for both domestic and international trademark owners.

NEGATIVE IMPACT OF THE MADRID SYSTEM IN INDIA

Restrictive registration:

The biggest disadvantage is that international registration can only be done in the member countries to the Madrid Protocol. There are over 130 countries who are a party to the Madrid Protocol, the remaining countries have their own system of international registration of trademark. Though a single application for international registration of trademark can be filed to get protection of trademark rights in multiple countries, it is restricted to the 130 countries who function under the Madrid system. It means that if any Indian trademark owners wants to gain trademark protection rights in a country who is not a member of the Madrid system, he shall have to follow the procedure of that country to get his trademark registered therewith.

Lack of Manpower in India:

Prior to the Madrid system India’s manpower entertained national filings and international filings differently. But now, there is a lack of manpower as both the national and international filings are done simultaneously. It has become difficult for them to look into both filings at the same time and there is need for more manpower to carry on the work with efficiency.

Time restrictions on applications:

The Madrid system put a time restraint on the process of trademark registration. According to the Madrid protocol, the international application has to be processed and obtained with a time period of 18 months, which could at the maximum be extended to 24 months. As the Madrid system has made it easier for the member countries to get their trademark registered in multiple countries, many trademark owners get their trademark registered in most member countries including India. Now what happens is due to the time restriction on international registration, India focus on the international registrations first leading to a delay in the process of its national filings. We can say that priority is given to the international filings than to the national filings, leading to a delay in the national filings.

Basic application dependency:

The international application is completely dependent on the basic application and registration, due to which, if an applicant makes a change in the basic application or registration, there shall be an automatic change in the international application or registration as well. Changes like cancellation of a trademark entry, striking out some goods or services from those in respect to which a trademark was initially registered. So, if an Indian basic mark is cancelled then the international mark will be cancelled too. However, it is important to note that the international registration becomes independent.

Business interest in non-member countries:

Under the rules of the Madrid Protocol, assigning the ownership of an international registration to entities residing or having a connection with non-Madrid Protocol countries is prohibited. The Madrid Protocol governs the international registration of trademarks among its member countries, and the rights and benefits provided by the Protocol are limited to only those countries and not the non-member countries. This is a disadvantage or major drawback for India because it has business interest in several other countries who aren’t the members of the Madrid Protocol. Due to this drawback India has to file a separate national applications to do business with these countries.

Suggestions

After conducting a thorough research of the impacts of the Madrid protocol system on India, I can say that there are more advantages to this system when compared to the disadvantages. My aim of conducting this research was to make all the Indian trademark owners and the people who are desirous of getting their trademarks registered internationally aware of this new system and how much easier and beneficial the international trademark system has become after India’s accession to the Madrid protocol. Any trademark owner who aspires to get global recognition for his brand can now do it with a single application in more than over 130 countries. This is highly beneficial for India as many trademark owners gain a global reputation which also benefits India’s reputation. So we can say that as more and more Indian trademark owners are acquiring recognition globally it is adding to India’s progress too. Apart from this I’d like to bring a suggestion to the drawbacks of this system. In my opinion, if all countries in this could sign the Madrid protocol it would’ve become easier not only for India but for all the countries in this world to get a global recognition of their trademarks. But obviously we cannot expect such an ideal situation.

Coming to the other issues India faces after the accession to the Madrid protocol, is the issue of less manpower and the limitation period set within which one can get their trademark registered. The Indian government should take cognizance to the fact that there is a lot of pressure when trademarks are being registered both nationally and internationally. Increase in manpower is the need of the hour. As already stated the process of application has to be completed with the time frame of 18 months with a maximum extension to 24 months. By increasing manpower we can tackle the problem of time restrictions on applications.

Last but not the least, as stated in one of the drawbacks, the international application is completely based on the basic registration application so if a change takes place in the basic application the same change is simultaneously made in the international application too. This may cause a problem to the trademark owner who wants to makes changes in the basic application but not in the international application. There should be an option wherein one can make changes in consideration to basic application.

Conclusion

After a detailed study of the impact of Madrid protocol to the Indian trademark registration and protection, I have come to the opinion that the Madrid protocol provides for a captivating path for all the Indian trademark owners. It gives them a chance to acquire a quick brand presence globally, with a user friendly procedure which makes it possible for them to attain international registration of their trademark in most of the countries with a single application. However, the Madrid protocol doesn’t promise Indian trademark owners trademark protection all over the world. An Indian trademark owner can get his trademark registered at once in only the member countries and not the other countries. Though we can take note of the fact that the countries who are a member to the Madrid protocol represents more than 80% of the trade flow and makes up for a very captivating route for all the Indian exporters.[vii] After the Madrid protocol in India we can see that there is a rise in the number of applications for international registration of trademarks in India. This system has definitely benefited India as the Indian trademark owners get an opportunity to attain goodwill on a global scale without spending much cost. Overall I’d say that the impact has been more on the positive side. Though there are some drawbacks of this system for India but when compared to prior system there has been an impressive change. The system has resulted to more recognitions of Indian brands globally and there are more foreign investments in India. In general, the system offers a tremendous support to Indian trademark owners.

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