Upgrades to India’s IP regime are alleviating some of the concerns of rights owners, says Mark Robertson of Hilton Worldwide
For a hospitality group like Hilton Worldwide, brand protection is no small task. The Hilton group’s brands cover more than 3,700 hotels and 610,000 rooms in 82 countries. In India, Hilton has four branded properties and plans to add 10 new hotels under various brands by the end of 2012.
As the hotel group embarks on new projects in the country, its ability to effectively manage and protect its intellectual property assets is crucial.
India’s intellectual property regime has often been criticized for being weak, cumbersome and ineffectual. While these observations carry some merit, it is important to acknowledge measures that have been adopted to bring greater sophistication and transparency to the country’s intellectual property administration. For example, efforts have been made to accelerate the resolution of cases through an expedited specialized court and refinements to substantive laws, which have aligned India’s IP protection scheme with other major world markets.
Furthermore, the implementation of the Trade Marks Act, 1999, has significantly modernized the country’s trademarks laws. One of the most attractive features of the law is its recognition of well-known trademarks – a concept particularly beneficial to big brand owners since it implies that a mark need not be used within India in order to be protected. This allows many foreign businesses to enter the Indian market with greater comfort and confidence.
Cases such as NR Dongre v Whirlpool Corporation and Milmet Oftho Industries and Ors v Allergan Inc clearly demonstrate that robust brand protection is possible. For a brand like Hilton, such laws provide tremendous reassurance.
Hilton has, for the most part, succeeded in enforcing its trademark rights in India without resorting to litigation. The company has obtained registrations – in goods classes prior to 2003 and as service marks since then – to protect its marks. These registrations have repeatedly helped to curtail the use of identical or confusingly similar names, such as “Hillton”, “Hilten”, “Shilton”, etc., with little or no resistance.
Moreover, the Trade Marks (Amendment) Act, 2009, which aims to address and comply with the requirements of the Madrid Protocol (passed by both houses of parliament and awaiting presidential assent), provides added reassurance to foreign and domestic trademark owners. It is hoped that the notification of the amendment bill will quicken the examination process, which we as legal advisers have already seen shorten from over 10 years a decade ago to as little as three years today.
Unfortunately, these enhancements to India’s intellectual property machinery have not been dramatic enough to alleviate all of the concerns of rights owners altogether. Regional differences in language and practice, as well as inconsistent translations continue to inject a degree of uncertainty into the legal process. These differences would be less disruptive if there was a prompt appellate process to clarify the decisions of the courts and create a unified body of law. Specialized courts with exclusive jurisdiction would also be helpful.
Hilton’s business in India has depended largely on highly qualified local legal advisers. Choosing experienced and specialized counsel is important in navigating the country’s slow-moving bureaucracy. Understanding the role of counsel and their limitations is also critical.
Some specialized counsel who excel at trademark registration work are not well versed in the nuances of IP trial litigation and appeals. Furthermore, the distinctions between senior advocates and advocates-on-record, and the client’s relationship with each, are not readily apparent to many non-Indian IP owners. Indian lawyers should educate foreign businesses upfront on these issues and help in identifying and securing the correct trial and appellate counsel. Local advisers should also proactively schedule registration and litigation developments, keeping their clients notified of delays and uncertainties in the dispute resolution process.
Despite a long record of successful enforcement, Hilton has recently been forced to appeal a district court order on the grounds that the court did not properly take into account the doctrine of transborder reputation as set forth by the Indian Supreme Court in NR Dongre v Whirlpool Corporation and Milmet Oftho Industries and Ors v Allergan Inc. The order also conflicts with an injunction more recently issued in Hilton’s favour by Delhi High Court. Although the high court in the matter clarified that the district court order does not restrict Hilton’s registrations and ability to use the “Hilton” mark in India, the order has put Hilton to additional time and expense in protecting its mark in India.
Reconciling the jurisdiction of different courts and the language in their orders has proven challenging and has led to misleading press reports about Hilton’s cases. These articles could make foreign observers think twice about exposing their well-known brands to local use. Any subsequent decision to stay away would be to the detriment of Indian businesses, global brands and Indian consumers.
It is therefore vital to all stakeholders that the current trend towards greater uniformity and faster dispute resolution continues.
Mark Robertson is the senior vice-president and assistant general counsel for operations, brands and commercial services at Hilton Worldwide. He was assisted with this article by Christian Eriksen, a counsel at Hilton.