India submitted its instrument of accession to the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks, known as the "Madrid Protocol” on 8 April with the World Intellectual Property Organization (WIPO). India became the 90th country to accede to the Madrid Protocol. This is one of the most important developments in Indian trademark law in recent years, providing a system for obtaining international trademark protection that is streamlined and potentially very cost-efficient. The Madrid Protocol’s efficient trademark protection shall be made available in India to international and domestic trademark owners on 8 July, the date on which the treaty will enter into force with respect to India.
Brief history of legislative initiatives
The Trademark (Amendment) Bill, 2007 was introduced in Parliament on 23 August, 2007. However, due to the paucity of time, the Bill could not be taken up for consideration and the Bill lapsed. The Bill was reintroduced in 2009. The upper house (Rajya Sabha) of the Parliament passed the Trademark Amendment Bill, 2009 after a spirited debate on 10 August 2010. Thereafter, the lower house (Lok Sabha) of the Parliament also passed the Bill. The 2009 amendment to the Trademarks Act inserted chapter IVA, entitled “Special provisions relating to protection of trademarks through international registration under the Madrid protocol”.
Also, the Government of India through the Ministry of Commerce and Industry (Department of Industrial Development) made amendments in the existing Trademarks Rules to incorporate the procedural laws for implementation of the Madrid Protocol. The Trademarks (Amended) Rules, 2013 shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint.
India has, therefore, brought about the necessary amendments and changes in its existing trademark laws to be in harmony with the Madrid Protocol. However, the implementation of the laws governing the Madrid Protocol has to be tested.
The Madrid Protocol not the Madrid Agreement
India has joined the Madrid Protocol and not the Madrid Agreement. The Madrid System is only available to applicants in its member countries, and the geographic scope of trademark protection is also limited to the territories of these countries. Domestic applicants in India will only be able to designate member countries of the Madrid Protocol. There are only a few countries that have joined exclusively the Madrid Agreement and not the Madrid Protocol and as such domestic applicants in India will not be greatly affected. The Madrid Protocol, which came into existence in 1989 and came into force on 1 April 1996, is an offshoot of the Madrid Agreement and has modernised the Madrid Agreement in several ways. The most important advantage of the Madrid Protocol is the ability to file an international application on the basis of a pending application in a Contracting Party instead of a registered trademark as required under the Madrid Agreement. Also, the important aspect of the Madrid Protocol is the mechanism to apply for transformation of a failed international registration into regional or national applications while retaining the priority date of the original international registration.
These are some of the considerations that weighed over the decision of the Indian Government to accede to the Madrid Protocol.
Like the PCT system in patent law, the Madrid Protocol is also a mechanism for obtaining trademark protection under individual national laws and is not a trademark law in itself.
Advantages of the Madrid Protocol
The most obvious advantages for Indian and foreign businesses by the accession of India to the Madrid Protocol are:
- Convenience and cost-efficiency of paying one fee and using one trademark registration as the basis for registration in many different countries. Using the Madrid Protocol, an Indian applicant may extend protection for a trademark in one or more member countries by electronically filing an international application designating member countries where trademark protection is sought with the Indian Trademarks Registry. The Indian applicant may base its international application on an existing Indian registration or on a new Indian application. Likewise, an international applicant may designate India and claim trademark protection in India.
- The Madrid Protocol obviates the need for the Indian applicant to retain separate local trademark counsel in each country in which it wishes to file a trademark application, unless the national trademark office issues a rejection or requires additional information. This benefit will also extend to the international applicants, designating India.
- The Madrid Protocol speeds up the prosecution process by limiting the amount of time an office of a Contracting Party has to act once it has received a request for extension of an international registration. An application filed directly through a national office can take more than six years to process and as such the Madrid Protocol will be a boon for domestic as well as international applicants.
- The Madrid Protocol provides that any change in the details of the right holder such as name or address or title can be reflected through one single document at the International Bureau and no separate steps are required to be taken at each national office.
- The Madrid Protocol provides the flexibility of adding and subsequently designating the member country at a later date under the same international registration. The filing and maintenance fees associated with the international registration are lower over time than maintaining several separate national registrations.
The preparedness of India to deal with international applications
Even though India has amended its trademark laws to be consonant with the Madrid Protocol, the implementation of laws in true spirit has to be seen once the Madrid Protocol comes into force on 8 July 2013. Some of the disincentives to implementation of the Madrid Protocol in India are:
- Lack of manpower: The Indian Trademarks Registry has not been able to streamline its national filings till date due to lack of manpower. The additional burden of international applications on the already low-staffed Trademarks Registry will aggravate the situation.
- Discrimination between national applications and international applications: The Indian Trademarks Registry will have to process the international applications under the Madrid Protocol within 18 months, which in turn will delay national applications. If such discrimination becomes rampant there are all possibilities that the applicants of national applications will ask the courts to uphold their right to equal treatment.
- Vulnerability: For the first five years, an international registration is dependent on the basic mark. Hence, if an Indian basic mark is limited or cancelled, the international registration, and all extensions under it, are similarly limited or cancelled. After the expiry of this five-year term, however, the international registration becomes independent. The Indian Trademarks Registry has a huge number of trademark registrations and applications. The possibility of refusal on relative grounds and oppositions is also relatively high. International applicants need to be very cautious before selecting any trademark and taking the route provided by the Protocol.
- Goods and Services: The Indian Trademarks Registry allows broad specification of goods and services. However, the same may not be acceptable under the national laws of other jurisdictions.
- The Madrid Protocol restricts the freedom to assign ownership of an international registration to entities residing in or having a connection with a non-Madrid Protocol member country. India’s neighbours, such as Pakistan, Nepal, Bangladesh, are not members of the Madrid Protocol. Indian businesses have considerable interests in these countries and will have to file national applications.
Although the Madrid Protocol offers a useful and cost-effective way of obtaining trademark protection, applicants need to tread cautiously and should take an informed decision to use the Madrid route in India only once the waters have been tested. Further, while choosing between the national filing and the Madrid route, filing strategy should be tailored to deliver the best results, especially considering the nature of the trademark concerned.