Madrid Protocol A Boon For Indian Entrepreneurs

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LAW MANTRA THINK BEYOND OTHERS (National Monthly Journal, I.S.S.N 2321 6417)

Madrid Protocol: A boon for Indian Entrepreneurs

One application, in one place with one set of documents in one language with one fee in one currency resulting in one registration with one number and one renewal date covering more than one country 1

INTRODUCTION Trademarks play a very significant role in a global marketplace. Now-a-days, Trademarks are world over known to constitute words, names, letter, numeral, graphical representations in the form of 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.2 Trademark law has undergone profound changes, both multilaterally and regionally.3The Paris Convention was the beginnings of this international trademark system. This Paris Union is extended by a special union, namely, the Madrid Agreement. Then, the Madrid Protocol expedited the international filing system.4Although 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.5 Infringement action under The (Indian) Trademarks Act, 1999, can be followed only for a registered trademark. The Trade Marks (Amendment) Act, 2010 passed on September 21st, 1

The Madrid system for international registration of marks, (International Trademarks Association, New York) 2000, p.8, 2 Christine Chiramel, The Madrid Protocol And Its Applicability In India, Associates, Vanish Associates Advocates Available at 3 Marshall A. Loafer, the New World of International Trademark Law, 2 Marq. Intell. Prop. L. Rev. 1., 1998 4 Bingbin Lu, Madrid System for the International Registration of Marks: An Updated Overview, Intellectual Property Studies, Vol. 17, pp. 226-246, 5 Ibid, note 1.

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








deliberatingabout exactly how Madrid protocol is advantageous for Indian entrepreneur, the researcher desires to go through with the Madrid system & Protocol. MADRID AGREEMENT In 1891, some of the Paris Convention countries met in Madrid to create a uniform system for the international filing and registration of trademarks. Their product, the Madrid AgreementConcerning the International Registration of Marks, took an important step in international trademarks protection.6It has since than undergone a number of revisions. The last revision took place at Stockholm in 1967, and as amended on September 28, 1979. So another name of Madrid agreement is the Stockholm Agreement. The Madrid Agreement allows Member citizens toobtain trademark rights in other Members by a single filing with their home country's trademark office with directions to file the application with the InternationalBureau created by the Paris Convention.7 However, loss of trademark rights in the home country results in similar losses in the other Member countries ("central attack"), and enforcement continues the Paris Convention method of requiring suit in the alleged infringer's country. Under the Agreement, the owner of a home country trademark registration, commonly referred to as the "basic registration, "may filean international application with its national trademark office designating those other membercountries in which extension of protection is desired, which issues an international registrationfor the mark, publishes the mark in the international trademark gazette and forwards the application to the designated countries for examination pursuant to national law. MADRID PROTOCOL The Madrid Protocol Relating to the Madrid Agreement Concerning International Registration of Marks (Madrid Protocol)8 was enacted in 1996 as an extension of the Madrid 6

Madrid Agreement Concerning the International Registration of Marks, April 14, 1891, 828 U.N.T.S. 389, 1 Basic Docs. International Econ. L. 781 (CCH 2008). 7 Madrid Agreement, Id, Art. 1 (2). 8 A copy of the treaty, the implementing regulations and other information is availableat

Agreement. Though similar in many respects to the Madrid Agreement, the Protocol includes a number of innovations designed to make it possible for the countries to join the Madrid system. During its first 20 years, WIPO was a strong force in the administration of international conventions, but ineffective as a catalyst in the movement toward harmonization.9 In order to garner the bundle of national rights in other countries available under the Madrid Protocol, an application for International Registration is submitted in the home country. This application lists the member countries to which the applicant desires protection to be extended. Though an International Registration certificate is given at the time of filing, this No changes will be made to the document, but the result of the examination process that occurs over the next 18 months confers enforceable rights on the owner of the International Registration. To be certain of the validity of the mark in member states, a certified copy of the registration showing the current status of the International Registration may be ordered from the World Intellectual Property. THE MADRID SYSTEM Both the Protocol and the Agreement (collectively, the Madrid System) are administered by the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland. There established an Assembly of Special Union as the fundamental body and an International Bureau as the administrative body of this system. The goal of the Madrid System is to streamline the process of obtaining global trademark protection. The Madrid Agreement and the Madrid Protocol are independent, parallel treaties, with separate but overlapping memberships. This International Trademark System gives a trademark owner the possibility of having a mark protected in up to 89 countries10 by filing one application, in one language, with one set of fees, in one currency. Thereafter, the international registration can be maintained and renewed through a single procedure. An international registration under the Madrid system produces the same effects as an application for registrationof the mark made in each of the 9

In 1987, the United States General Accounting Office concluded that, although WIPO was the foremost multilateral intellectual property forum, it had made little progress toward strengthening international intellectual property rights. A main reason for this failure, the GAO opined, was U.S. refusal to consider the needs of developing nations for more flexible intellectual-property protection that the other major industrial nations were willing to provide. Onique L. Cordray, GATT v. WIPO, 76 J. PTO Soc'y 121, 124 (2004). 10 These are the total number of member countries updated till January, 13Available at

countriesdesignated by the applicant. If protection is not refused by the trademark office of a designatedcountry, the protection of the mark is the same as if it had been registered by that office.11Thesystem provides a cost-effective and efficient way for trademark holders to ensure protection fortheir marks in multiple countries through the filing of a single application. APPLICANT REQUIREMENTS 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.12 The Madrid Protocol allows applicants to choose the exact countries in which they seek protection. APPLICABILITY OF THE MADRID SYSTEM IN INDIA On 8th February 2007, the Union Cabinet ratified India‟s accession to the Madrid Protocol. The Trade Marks (Amendment) Act, 2010 was passed on 21st September, 2010 to bring into force the Madrid Protocol in India; although the same is still to be implemented i.e. the effective date for the Amendment Act to come into force has not yet been notified. One of the major changes brought about by the amendments include Section 23 (i)13 wherein the registration process for a mark is to be completed in a time bound manner “within eighteen months of the filing of the application”. This change will challenge every aspect of the registration process within trademark office in India, forcing deadlines at every stage of the registration procedure laid out under the Trademarks Act and supplemented by the Trademark Rules in India. Another major amendment to be implemented is the insertion of a new Chapter IVA in the principal Act in light of international applications and registrations under the Madrid Protocol. PROCEDURE FOR AN INTERNATIONAL APPLICATION UNDER THE MADRID PROTOCOL Upon India being a signatory to the Madrid Protocol, the applicant, while making an international application to the National Office on Form MM2, may select from the list of the member countries where he seeks protection of mark. The application form may be filled out


Ibid, note 4. Supra Note 2. 13 The (Indian) Trademarks Act, 1999. 12

in English, French or Spanish and is subject to the payment of a basic fee, complementary fee for each designated Contracting Party (member country) and a supplementary fee for each class of goods and services. Such fee may be payable to WIPO directly or the Office of Origin which may charge an additional handling fee, and thereafter the following procedure will be followed: 1. The Office of Origin in the country of origin examines whether the international application corresponds to a mandatory basic application or basic registration and complies with home state requirements. A Basic application defined under Section 36 B (b) of the Trade Marks (Amendment) Act, 2010 is an application for registration of a trademark filed under Section 18 of the Act, and which is used as a basis for applying for an international registration. Basic registration defined under Section 36 B (c) is the registration of a trademark under Section 23 of the Act, and which is used as a basis for applying for an international registration. The Office of origin must certify that under Article 3 (1) of the Protocol the mark is the same mark as that in the basic registration, or basic application, certify the initial date on which it received the request to present the international application. 2.

The application should be received by the International Bureau from the Office of Origin [Article 3 (4) of the Protocol] within two months of that initial date of receipt of the application by the Office of Origin, that initial date will be the date of the international registration. The International Bureau examines that the international application complies with the requirements of the Madrid Agreement or Protocol, Common Regulations concerning the implementation of the Protocol, the indication of goods and services and their classification, required fee payment and other basic administrative requirement.

The International Bureau informs the Office of origin and the applicant of any irregularities; these must be removed within three months, otherwise the application will be considered abandoned. On successful examination the InternationalBureau then Records the mark in the International Register, publishes the mark in the Gazette, and notifies each contractingparty or member country that are the designated countries listed in the application, asking fortheir consequent approval, and granting of registration.


On further examination of the Office of a Contracting Party in the exact procedure adoptedfor a direct national application, if grounds for objection arefound during the ex officio examination, or if an opposition is filed, the Office can declare a provisional refusal(within 18 months of receipt of the application‟s notification from the International Bureau for India) for protection of the mark in that member country.

REFUSAL OF PROTECTION BASED ON OPPOSITIONS Article 5 (2) (c) of the Madrid Protocol states that such refusal by the National Office of designated country based on oppositions can be made post the expiry of the 18 month time limit from notification receipt, provided it has, before the expiry of the time limit, informed the International Bureau of the possibility that oppositions may be filed after the expiry of the time limit, and the notification of the refusal is made within one month from the expiry of the opposition period and, in any case, not later than seven months from the date on which the opposition period begins. A provisional refusal if declared by a member state is recorded in the International Register by the International Bureau, and further published in the International Gazette, along with the transmission of a copy to the holder of the international registration. All Post refusal procedure is carried out directly between the holder and the Office concerned, such as review, appeal, or response to an opposition. On completion of above procedures, a statement is sent to the International Bureau indicating the provisional refusal is confirmed, or totally withdrawn, or partially withdrawn. This statement is also recorded in the International Register and published in the Gazette. If no objection is received by the International Bureau from the designated Member States, within the prescribed time limit i.e. normally twelve months (extended to 18 months under the Protocol for India), or a grant of protection is issued by the Member State Office, it is deemed to

be accepted by the Member State and the mark will then have the same

protection as registered national marks in that country. The duration of protection granted by an international registration is 10 years, before which a renewal application must be filed to extend protection. A renewal grace period of 6 months may be granted under Section 36G (2) of the Act. DEPENDENCE ON THE BASIC MARK (ARTICLE 6 OF THE MADRID PROTOCOL)

Under Section 36 E (8) for a period of five years from the date of an international registration, if the initial basic national registration ceases to have effect, through a cancellation following a decision of the Office of origin, or court, or voluntary cancellation, or non-renewal, the international registration will no longer be protected. Where


international registration was based on an application in the Office of origin, it will be canceled if, and to the extent that, that application is refused or withdrawn within the fiveyear period, or if, and to the extent that, the registration resulting from that application ceases to have effect within that period. The Office of origin is required to notify the International Bureau of facts and decisions concerning such ceasing of effect or refusal. The cancellation is published in the Gazette and notified to the designated Contracting Parties. After the expiry of the period of five years from the date of international registration, the registration becomes independent of the basic registration or basic application. SCOPE OF AN INTERNATIONAL REGISTRATION An international registration is deemed to replace a national or regional registration for the same mark under Section 36E (6) of the (Indian) Trademarks Act and Article 4bis of the Protocol. If the national or regional registration is not renewed, the holder of the international registration may continue to benefit from the earlier rights acquired by reason of that national or regional registration.The holder of an international registration can expand the geographical scope of the protection of his mark by filing a subsequent designation. The following may also be recorded in the International Register: (i)

A limitation of the list of goods and services in respect of all or some of the designated Contracting Parties;


A renunciation in respect of some of the designated Contracting Parties for all the goods and services;


A cancellation of the international registration in respect of all the designated Contracting Parties for all or some of the goods and services;


A license granted in respect of all or some of the designated Contracting Parties, and for all or some of the goods and services.

Information concerning changes, cancellation and licenses are published in the Gazette and notified to the designated Contracting Parties.

INDIA’S ACCESSION TO THE PROTOCOL - PROS & CONS The Indian trademark practice of filing applications in each country for registration and tracing them simultaneously is quite time consuming and expensive. For that reason, it is a boon for India that it has become a member of the Madrid system, and we should realize the advantages of the same since it enables an applicant company seeking international registration to file only one application and pay only one fee in local currency. The trademark protection under Madrid Protocol may be extended to additional jurisdictions at any time, as and when they join the Madrid system. A mark registered under the Madrid system is deemed to get the same protection as if it is being directly registered in each country. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that office. It is also pertinent to note that under the Madrid system the applicant can make any change of name, address and so on and so forth and also renew the registration across all applicable jurisdictions through a single administrative process. The pharmaceutical industry is the major beneficiary of India‟s decision to join the Madrid Protocol and the benefit derived by the Pharmaceutical industry is also seen to have percolated to other industries such as Coffee, Tea, and Cocoa and Electronic industry14. Though the corporate houses are set to gain a lot by this step taken by India but it will not be so for the small sector industries owing to the high cost involved in registration. Another major criticism is that the Madrid Protocol still retains „dependency‟ of the international registration on the existence of the basic registration. Although under the Madrid system the number of international registrations subjected to a central attack is less than 1%15, there seems to be a lack of policy consideration behind inserting such a provision. This is especially so when each national office has been given sufficient time to enable them to invalidate trademarks based on their domestic law, including opposition proceedings.

14 15

K.K.Sharma, Should India join Madrid Protocol, Advocate and IPR consultant, Halsbury‟s Law, March 2008. Protecting your trademark abroad: 20 questions about Madrid Protocol (WIPO, Geneva) 2001, at p.13.In 2000, nearly 23000 international registrations were effected; during the same period, only 140 international registrations were cancelled (in whole or in part) as a result of the central attack.

Further, if the registration in India is invalidated on the ground that the trademark is in violation of an earlier mark,16 then the impugned mark automatically loses its protection in other countries even if the infringed earlier mark did not even exist in that other country!!! However, the risk of central attack is mitigated by the introduction of the possibility of “transformation”. Thus, the filing date of the international registration will be maintained. Although, the Protocol mitigates such attacks by way of the principle of transformation, transforming the application into a direct national application may be more costly and timeconsuming than filing separate national applications17. In the fairness of the scheme, it seems beneficial for India to have joined the Madrid Protocol and help Indian business community to get international registration of their trademarks at affordable cost and on a time bound manner. However, infrastructure and the resources available to Indian trademark registry need to be strengthened and training has to be imparted to the officials of Trademarks Registry to be able to handle such international applications. Similar training is also desirable for the legal fraternity with assistance from WIPO. It is often found that the filing rate is quite high in case of member countries having depository system as against the countries which follow comprehensive system of examination of applications for registration of trademark. Accordingly, the filing rate of application for registration of trademarks in India is quite high and the infrastructure and resources available with the Indian Trademark Registry are insufficient as compared to other countries having lesser or same filing rate. Although the Indian Trademark Registry has cleared the backlog of five years by ad hoc measures so that it could be in a position to join Madrid Protocol, yet it needs a long term strategy so as not to allow the backlog to resurface since the human mechanism cannot be sustained for long. This requires strengthening of the infrastructure and raising IT level supports18. The IT system in the Indian Trademarks Registry needs a holistic revamping for which strong support is needed from Indian Government and WIPO, together with the assistance of a team of dedicated officers. As of today, the working strength of officers therein is sufficient to discharge the day to day statutory duties. If these officers are diverted, a strong possibility of 16

Trademarks Act 1999, Sec 33. CeledoniaBaila.H. & Epstein Jeffrey H, Limitations of the Madrid Protocol for US companies, Practicing Law Institute: Patents, Copyrights, Trademarks and Literary Property, Course handbook series, 387 (2004), 257284. 18 Online registration of trademark applications in all the regional offices and headquarters has begun from October 2002 and a digital database library on CD-ROMs of 150000 Trademarks Certificates and 1250 Trademarks Journals has been created. 17

the backlog resurfacing exists. A solution for this is to hire experts from technical as well as legal fields. It is often debated that the concept of e-filing cannot be achieved by India. But the Intellectual Property Offices in India have commenced e-filings of patents and trademark applications. Now applicants can file their patent and trademark applications from anywhere in the world at any time as per their convenience with the help of the internet. Payments can also be made through the Payment Gateway of authorized bankers, which will save time and money and the hassles involved in visiting and filing the applications in the offices19. A major program of modernization of the infrastructure of Intellectual Property offices of India costing Rs. 153 crore was implemented during the 10th Five Year Plan. Computerization has been one of the key components of the modernization initiative. As part of this, facilities have been created for e-filing of patent and trademark applications20. Soon, the complete process of grant of patent or registration of trademarks will become online and the Indian Patent and Trademarks Offices will function almost as paperless offices. The modules for the e-filing and online processing have been developed by the National Informatics Centre. Thus with the launching of the e-filing facility the first phase of the modernization drive comes to an end. Factors like difficulties over delay and the differences in level of strictness of Indian Registries compared to their foreign counterparts are such that can have serious implications in India while implementing the Madrid Protocol. There would be a penalty on Indian trademark owners if the Indian trademark registry does not transmit and ensure receipt of their international applications by the International Bureau within two months of filing. In such an event, instead of the date of filing, date of receipt by the IB would become the date of the international application. If the Indian trademark registry does not expedite its processing it would put its nationals at a relatively disadvantaged spectrum since offices of other countries work faster. It is also notable that to oppose the extension of international applications into India, notice of publication of both, international registrations and of recordals of extension, would have to be taken from the Gazette of the International Bureau even though it warrants that a few copies 19

India to file application for ISA and IPEA recognition soon, - Kamal Nath launches e-filing of patent and trademark applications. The Hindu, 20 July 2007. Shri. Kamal Nath, the former Union Minister of Commerce and Industry, has launched the e-filing of patent and trademark applications, at the function organized by the Department of Industrial Policy and Promotion (DIPP). 20 Here are only a dozen or so countries which have e-filing facilities at present and India now gets into this elite group consisting of countries like USA, Japan, South Korea, China and the European Patent Office.

shall be furnished to the Indian trademark registry. From the date of the international registration or recordals in favour of a foreign trademark, its protection in India will also commence as if the mark had been deposited directly with the Indian trademark registry. This will require the Indian trademark owners to engage internationally savvy trademark agents. Though this step would result in a burdensome expense for some Indian trademark owners yet, it is necessary so as to safeguard their rights. The Bill provides that the Indian Registrar of trademarks will be empowered to take up applications from the countries that are the part of this Protocol; But this sure to become an additional burden for the Registrar of Trademarks Office. Further, no clear procedure has been laid down in the Bill regarding the processing of the international and domestic applications. Further, the Bill also fails to look into the aspect of providing protection to the non-visible marks. In the present scenario, protection of these non-visible marks has gained a lot of importance on the international front. But the proposed Bill does not contain any references about this new emerging branch of trademark. CONCLUSION On concluding, the researcher wants to say that there is no time limit to apply for an international application once a national application/ registration is pending or granted. The international application depends on a mandatory basic national application or registration as long as it is pending and valid. If either fail before the international registration is granted or within 5 years of the international registration being granted, the international application/ registration will also become invalid. There is no specific provision explaining the procedure for dealing with oppositions or replies between the Indian registry and the international applicant with regard to an international application filed abroad and notified to India by the International Bureau for registration. Further, Indian Trademark Rules also specify that an applicant should have an address for service in India which will apply to International applicants once the Madrid Protocol is effectively implemented through the notification of the Amendment Act, 2010. Nothing in the amendment act specifies opposition proceedings in international Madrid applications where India is a designated country. The Amendment act increases the period for notice of opposition to 4 months. India will have to amend the trademark registration procedure rules

for a smooth transition into a Madrid system procedure and post amendment registrationprocess. Advantages of the Registration under the Madrid System are single application for trademark protection in numerous Madrid member countries, wider protection, single fee for trademark application in one language (English or French), Speedy and cost effective process of registration. By- Mohammad Nizam Ashraf Khan, Assistant Professor, School of Law, Galgotias University, Greater Noida and Mohammad Umar, Research Scholar, Faculty of Law, Jamia Millia Islamia, New Delhi.

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