Putting the house in order


India’s accession to the Madrid Protocol is a beacon of hope for IP owners, but urgent improvements are needed closer to home, argues Simran Daryanani of INTA

As intellectual property assets become more valuable in a highly modernized and competitive global economy, the protection of these assets becomes a crucial concern. Rights owners in India – particularly trademark owners – face critical challenges arising from the interplay between rapid business expansion, rising consumer demand, online competition and the increasing sophistication of strategies for capitalizing on the value of intellectual property.

Simran Daryanani
Simran Daryanani

Trademark owners face a variety of hurdles when striving to protect and enforce their rights in India. One significant challenge relates to the chronic lack of infrastructure at the country’s trademarks registry, which suffers from inadequate human resources, underdeveloped database records, administrative delays and severe financial constraints. The lack of standardization in trademark processes and registration is also a serious threat to implementing effective IP protection mechanisms.

Discrepancies exist within the trademark registry’s database. These significantly reduce the reliability of brand clearance searches and have resulted in a crowded registry amassed with numerous co-existing identical trademarks.

This lack of procedural uniformity prevents rights owners from putting in place the robust apparatus necessary to protect their brands. For multinational companies, the situation is exacerbated by laws that vary between jurisdictions, further complicating the selection of adequate protection strategies.

So what must be done to facilitate the improvement of the current system? Leaders within the intellectual property fraternity stress the need for harmonization as the ultimate goal to further protect trademarks and to solidify a standard set of global criminal sanctions. Without a common standard, applicable across jurisdictions, trademark protection and criminal prosecution will continue to blow with the wind.

In the face of such challenges, the Madrid Protocol, to which India recently acceded, has been welcomed by IP owners as a beacon of hope.

The protocol, which offers trademark owners the possibility of having their trademarks protected in several countries simply by filing one application with their own national or regional trademark office, is unarguably one of the strongest moves towards trademark harmonization in India.

Although still in its early stages in the country, brand owners are awaiting the protocol’s full implementation in order to take advantage of the time and cost savings that will undoubtedly come with this newly adopted piece of legislation. In the meantime, they have no choice but to deal with the frustrations associated with protecting their brands and non-traditional marks in a somewhat sluggish system.

But in spite of the current challenges, brand owners may find reassurance in recent judicial and legal advancements in India that have been made to assist them in protecting their intellectual assets.

Although some trademark protections in India have been in place for many years, it was not until October 2008 that India’s first sound mark was successfully registered. This milestone ushered in a new element of trademark protection in the country as it opened up a vast new area where entrepreneurs could look for and develop new intellectual property. The development helped prompt new protections on the part of registries and administrators, successfully expanding and redesigning the concepts of intellectual property trademarking.

The judiciary in India has also been praised for its growing understanding of trademark disputes and for its ability to conduct cases more quickly from a procedural point of view. Nevertheless, there is room for improvement. The government must be open to additional education, increased training and capacity building, and new areas for investment and funding if it is serious about addressing the current challenges within the trademark registry system. Furthermore, an open and regular platform for dialogue among brand owners, practitioners and the authorities might be considered to help create an environment that addresses these obstacles from commercial, regulatory and legal angles, while at the same time ratifying practical solutions that inform and educate brand owners and consumers.

Simran Daryanani is the India representative of the International Trademark Association (INTA). She oversees the organization’s local operations and consults on intellectual property issues in the region.