INTRODUCTION
The Parliament is set to table the Draft Trade Marks (Amendment) Bill, 2022 (hereinafter referred to as the ”Amendment Bill”) as discussed in the Winter Session of the Parliament. The Amendment Bill inter alia, seeks to incorporate certain measures of the Madrid Registration System (hereinafter referred to as “MRS”). The Amendment Bill aims to enact special provisions to protect trademarks through international registration under the Madrid Protocol (hereinafter referred to as “the Protocol”), to which India is also a signatory.
The lack of awareness about Intellectual Property Rights (hereinafter referred to as “IPR”) has resulted in high risk of infringement and lack of innovations among other things. The amendment can be perceived as a step towards India’s participation in a global trademark system.
PROPOSED AMENDMENTS
The Amendment Bill proposes a globally compatible trademark registration system.. The MRS is an international system that deals with trademark rights in a foreign country with convenience. It aims at transformation and replacement which are needed to make the process of applications in the country hassle-free.
The Amendment Bill aims to amend procedures related to show cause, hearing, opposition, incorporation of electronic communication by the trademark office, etc. The objective of the aforementioned amendments is to speed up the trade mark application process in India, thereby safeguarding the rights of the proprietor.
The registration for trademarks in multiple countries or jurisdictions is primarily governed by two independent treaties- The Madrid Agreement (hereinafter referred to as “the Agreement”) and the Protocol. The Agreement was drafted in 1891 to introduce a unique and inexpensive worldwide trademark enlistment and reduce the need of solitary investments in various nations.
Whereas, on the other hand, the Protocol is a separate treaty and was adopted in 1989 to address the apparent lack in the Agreement. However, it is to be noted that the Protocol is a base structure to the Agreement itself for a reasonable global trademark enlistment.
The Parliament passed the Trade Marks (Amendment) Bill, 2009 (hereinafter referred to as “Amendment Bill, 2009”) to enact several provisions of the Protocol. The amendment permitted Indian businesses or individuals to enrol their trademarks in 97 jurisdictions with a single application.
Thereafter, India became a signatory to the Protocol in July 2013. Furthermore, according to the aforementioned agreement, the date of global registration of a trademark where India has been assigned; or the date of registration in the International Bureau’s register about the extension resulting from a worldwide enlistment of a trademark to India, is guaranteed protection in India equivalent to if the trademark had been enrolled in India.
The minimum term of protection under the Protocol is enumerated in Article 18 of the Trade Related Aspects of Intellectual Property Rights (hereinafter referred to as “TRIPS”) Agreement. It states that the initial registration and renewal of registration shall be for a term of no less than seven (7) years and stipulates that the registration of a trademark must be renewable indefinitely.
Essentially, trademark rights unlike copyright or patent rights can last for an indefinite period, on the condition that the original owner renews the registration at the expiry of each term and pays the required renewal fees.
The process of filing an international registration application has become convenient for Indian proprietors and businesses after India became a signatory to the Protocol. In the Amendment Bill, 2009, certain sections were inserted to the Trademarks Act, 1999 (hereinafter referred to as “the Act”).
As per the provisions, on the appraisal from the International Bureau, the National Registry will examine the mark under the domestic laws of the country. On the examination of the same, it can either refuse or accept the application and further provide the International Bureau of the decision within 18 (eighteen) months from the date on which it received the notification of the same.
The Protocol further simplifies the application process. It does not grant the application in every country to which the trademark has been applied for. The countries themselves accept or reject the application.
Each individual trademark office examines the application and the decision is sent to World Intellectual Property Organization (hereinafter referred to as “WIPO”). WIPO then communicates the decision to the office of origin. The country’s trademark registry apprises the applicant of the decision, who has a month to respond to the decision with objections, if any.
ADVANTAGES TO THE MADRID PROTOCOL IN INDIAN CONTEXT
The Protocol has simplified the international trademark process and has significantly reduced the cost to applicants, who, in the absence of Protocol would have had to apply for a trademark by filing different applications for several jurisdictions.
The Protocol has introduced a centralized trade mark application process through which an applicant can get worldwide protection through a single application and single set of legal and Governmental expenses, thus helping in reducing the costs.
Further, it avoids multiplicity of applications which would have led to a chaotic scenario in the IPR registration process. Moreover, if any change is to be made by the proprietor in the details of the trademark process, it can easily be done by filing a single application to the International Bureau instead of multiple applications to different jurisdictions.
Thus, the Amendment Bill aims to bring about a simplified process and allows the member country to be designated at a later period under the same International Registration. The filing and maintenance costs are much lower, than in separate jurisdictions. This encourages applicants to file trademark applications at a lower cost.
DISADVANTAGES OF THE PROTOCOL IN INDIAN CONTEXT
While the Protocol is one of the most cost-effective and non-cumbersome measure for the registration process, there are some drawbacks to the Protocol.
The Protocol entails that the international registration process extends only to Protocol territories. This essentially precludes an applicant from filing a trademark in other countries through the single application process. The applicant would have to file separate applications and pay separate Governmental and legal fees for different countries which are not a part of the Protocol countries.
Further, there is a consistent lack of manpower in the Indian Trademarks Registry which makes the process of national filings slow and cumbersome. With further amendments to the Act for the incorporation of the Protocol, it would increase the difficulty in handling national as well as international filings, with no subsequent change in manpower and time.
The time for processing international applications is eighteen months. This might cause a delay in processing national filings. This is further accentuated by the lack of manpower in the Indian Trademarks Registry.
AMLEGALS REMARKS
The Amendment Bill, in the event of it being passed by both the houses of the Parliament, would be a step in the right direction for the IPR regime in India.
It introduces a hassle-free process for trademark protection. In India, it becomes increasingly relevant to promote applications for trademark and copyright regimes.
Moreover, it is important to control and record the operational process of filing applications on international level and the Protocol is a step up for the same.
The Protocol provides a hassle-free, convenient and cost-effective method of obtaining trademark protection. However, this system requires an enhanced and efficient administration for dealing with applications, especially in India.
– Team AMLEGALS assisted by Ms. Anushka Sharma (Intern)
For any queries or feedback, please feel free to get in touch with mridusha.guha@amlegals.com or falak.sawlani@amlegals.com.
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