Trademark Protection- India
Trademarks are world over known to constitute words, names, letter, numeral, graphical representations in the form of shape/ configuration of goods, labels, logos, packaging, combination of colors, etc. with respect to goods or services, that are capable of distinguishing the goods or services of one person from those of another. Unregistered trademark rights accrue from common law creating a passing off right of action that must be established through priority date of first use along with continuous use over a period of time.
Although trademark registration is not compulsory in India, a major advantage of registration is that it confers a statutory monopoly and constitutes prima facie proof or evidence in the eyes of law towards the creation of an exclusive right in favour of the owner of the trademark. Infringement action under The (Indian) Trademarks Act, 1999, can be pursued only for a registered trademark.
The Trade Marks (Amendment) Act, 2010 passed on 21.09.2010 will bring the Madrid Protocol into force in India, once it is notified. This will enable applicants to make a single international application for trademark registration across numerous countries granting widespread trademark protection rights.
- The Trade Mark Amendment Act, 2010 amends the Trade Marks Act, 1999 (Principal Act) to provide for protection of Indian trade marks in other countries, in line with the Madrid Protocol. The Principal Act does not allow Indian and foreign nationals to register Trade Marks simultaneously in other countries. Thus, if a person wants to register his trade mark in other countries he has to make a separate application and pay fees in the respective country.
- The Madrid Protocol, adopted in 1989 and administered by the International Bureau of the World Intellectual Property Organisation (WIPO), provides for a system for international registration of trade marks.
- The Act 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 Act 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.
In case of international registrations originating from India, the applicant or registered proprietor may make an international application on a prescribed form. If a person holds an international registration, he may make an international application on the prescribed form for such registration to any other Contracting Party (any country or inter-governmental organisation which is part of the Madrid Protocol).
- The Act increases the time period of filing a notice of opposition of published applications, from three months to four months.
- The Act simplifies the provisions related to transfer of ownership of 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. The Registrar may ask the applicant to furnish further evidence only where there is a reasonable doubt about the veracity of any statement or document
What is the Madrid System?
The Madrid system facilitates registration of Marks in the International Register administered by the International Bureau of the World Intellectual Property Organization (WIPO). This extends protection to all the designated member countries, which is equivalent to territorial registration in nature. The system enables the registration of trademarks in multiple jurisdictions worldwide that are part of Madrid Union’s 85 member countries by filing a single application in the Applicant’s national trademark office, or regional trademark office.
What is the procedure for an application under the Madrid Protocol?
A Madrid application can be filed by a natural person, or legal entity, having real and effective industrial or commercial establishment status, or being a domicile, or being a national of a Madrid Union Member Country. The Madrid Protocol allows applicants to choose the exact countries in which they seek protection.
- Upon India being a signatory to the Madrid Protocol, applicant while making an application to National Office may select from the list of the member countries where he seeks protection of mark.
- The National Office in the country of origin examines whether the international application corresponds to the basic application and complies with home state requirements.
- On the National Office being satisfied, it forwards the application to WIPO. WIPO examines the application and the International Bureau places the mark in the International Register of Trade Marks.
- The International Bureau advertises the mark and passes on the details of the application to the designated countries listed in the application for their consideration, consequent approval and granting of registration.
- Member States designated in the application have twelve months to notify WIPO of any objections, but under special provision United Kingdom has eighteen months.
- If any Member State stated in the application does not send any objection within the prescribed period time limit it is deemed to be accepted by the Member State.
What is the life of a mark under the Madrid Protocol?
Registration under the Protocol lasts for 10 years, but can be renewed subsequently for periods of ten years. Any regional registration can be made an international registration, upon satisfying the conditions and requirements under the Madrid Protocol. The renewal rights in other countries designated in the application can be done under a single transaction.
What is the process for objecting to an application under the Madrid Protocol?
Besides individual oppositions before the National Offices of the designated Member States stated in the application, there is also a provision for a “Central Attack” under the Madrid Protocol. Under this if any application to the WIPO under the Madrid Protocol is rejected in the country of origin itself, at the discretion of the National Office or on the basis of an opposition, the application is then treated as rejected by all Member States designated in the application, in which the applicant seeks protection.
What are the advantages of the Madrid Protocol?
- The Madrid Protocol enables applications to other 85 member countries.
- International filing of applications can be accomplished without the appointment of a local agent in the designated countries.
- A single application at the origin country can be made either in English or French language.
- A single filing fee is payable in the applicant’s home currency. This eliminates the need to process multiple bills from different countries.
The extent of international protection desired by an applicant is left to their discretion. The Madrid Protocol allows applicants to choose exactly the countries in which they seek protection. There is also the option of filing in all Member States of the Madrid Protocol, thereby obtaining wide spread international protection of their mark.
This is particularly relevant to Indian companies having foreign interests, as it removes several procedural barriers in obtaining effective international protection of marks, and reduces considerably the cost and effort in such applications.