Madrid Protocol: Global protection of trademarks

By Abhai Pandey, Lex Orbis IP Practice
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With India adopting the Madrid Protocol and the consequent need to harmonize the system of trademark prosecution, amendments to the existing trademark law have been suggested.

The Trade Marks Amendment Bill, 2007, the first step in this regard, was followed by the Trade Marks Amendment Bill, 2009, since the earlier bill had lapsed due to the dissolution of the last Lok Sabha. The 2009 bill was passed by the Lok Sabha in December 2009 setting off modifications to the trademark law in accordance with international prescriptions.

Abhai Pandey Lawyer Lex Orbis IP Practice
Abhai Pandey
Lawyer
Lex Orbis IP Practice

Protocol’s key benefits

The Madrid Protocol provides for a simpler and more cost-effective system for international registration of trademarks. It allows registration through a single application in one language and one fee filed in the country of origin, which in turn is transmitted to other designated countries through the International Bureau of the World Intellectual Property Organization (WIPO).

It enables nationals of member countries to get protection of the trademarks within the prescribed period of 18 months. So, an applicant may file a trademark application in any member country, and choose India as one of the designated states for registration in patent cooperation treaty filings.

Registration procedures

The amendment bill defines a “basic application” as an application which is filed under section 18, which is used as the basis for applying for an international registration. It defines a “basic registration” as the registration of a trademark under section 23, which is used as a basis for applying for an international registration. The bill introduces a new chapter VIA, which contains special provisions relating to protection of international registration of trademarks. It allows applicants from India to protect their trademarks in various countries designated in accordance with the Madrid Protocol system as well as provide for duration and renewal of international registrations. While a person needing international registration has to apply for it, a person holding an international registration is allowed to make an application for extension of protection to any other contracting party under the common regulations.

Time constraints

The bill also introduces a uniform time limit of four months for filing notices of opposition. This will remove the discretion currently enjoyed by the registrar in granting extensions on this time limit. Moreover, if there is no opposition to the international registration, within the time specified, the registrar has 18 months to notify the International Bureau of the extension of protection.

Again, a holder of an international registration who designates India and has not been extended protection in India will have the same remedies available to any person making an application for registration under section 18 that has not resulted in registration under section 23.

The trademarks registry would act as the office of origin for applications originating from India and would be responsible for certification of international applications received by it regarding corresponding particulars and transmit them immediately to WIPO for registration. Thereafter it will forward them to the designated countries where protection is sought. The amendment also seeks to impose strict time limits on the registrar to dispose of applications for registration of trademarks generally.

Transferring ownership

The bill also looks at simplifying the law relating to the transfer of ownership of trademarks by assignment or transmission provided under section 45 of the act, to bring it in tune with international practice and modern business needs. It would pave the way for simplification of procedures as prosecution through a single application would be beneficial to the trademark applicant with lower attorney costs, translation costs and logistical compliance time. However, it would also result in a reduction in the work for foreign trademark filings in India.

Improving the process

Moreover, additional work will devolve on the trademarks registry in the matters of international registrations where India is designated. There is a need to modernize infrastructure and upgrade search facilities, so as to increase the relevancy and accuracy of search results and ensure the streamlining of the e-filing system. With the expected influx of international registrations, there is also need to appoint trained examiners and support personnel.

Abhai Pandey is a lawyer with Lex Orbis IP Practice, a law firm specializing in intellectual property issues.

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