How does the Madrid System benefit trademark owners?

Transcription

1 August 13, 2013 INTELLECTUAL PROPERTY LAW TRADEMARK UPDATE This update will detail the most recent developments in the field of Trademark law in India. More specifically, this update will give you an insight into (A) India s accession to the Madrid Protocol; and (B) the Trademarks (Amendment) Act, A. INDIA S ACCESSION TO THE MADRID SYSTEM India joined the Madrid Protocol in April, 2013 it came into effect on July 8, Here, we briefly address questions on the relevance, advantages and disadvantages of India s accession to the Madrid Protocol and how it affects people and companies who are applicants or registered proprietors of trademarks in India and abroad. What is the Madrid System? The Madrid System facilitates the registration of trademarks in multiple jurisdictions around the world. The Madrid System is governed by two treaties, namely, the Madrid Agreement Concerning the International Registration of Marks (1891) and the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989). The Madrid System is administered by the World Intellectual Property Organization. Why is the Madrid System relevant to India? Until the passage Trademark (Amendment) Act 2009, the Madrid System had little relevance to India. On , India joined the Madrid Protocol. The Madrid System now ranks India as one of its members, bringing the total strength of its member countries to 90. The treaty entered into force with respect to India on July 8, 2013, allowing foreign applicants to make filings in India and allowing Indian applicants to designate other countries for international filings. How does the Madrid System benefit trademark owners? The Madrid System offers trademark owners a flexible and cost-effective single procedure to protect their mark in more than 80 countries (the full list of countries can be accessed here.) The Madrid System not only decreases the work load of the applicant, but also facilitates greater levels of uniformity when it comes to trademark registration. The Madrid System, however, does not impose a uniform standard for 1

2 trademark registration, thus leaving considerable autonomy with each member country to determine whether a trademark should be granted or not. It provides a costeffective and efficient mechanism which reduces the multiplicity of applications and fees. It also does away with the need for a local agent to file trademark application in each jurisdiction. How does a filing under the Madrid System work? With the notification of the Trademark (Amendment) Act, 2010 (the Act ) and the Trademark (Amendment) Rules, 2013, the Madrid System allows trademark owners to simply fill in one form from their national office and pay one set of fees to obtain and modify an international registration. This application is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is considered the same as if it had been registered by that office. Changes to the applications (e.g. changes of name or address) and registration renewals are made easier through a single administrative process across all applicable jurisdictions. The protection afforded to the trademark can be extended by the trademark owner to one or more member jurisdictions at a later date and also to new jurisdictions which subsequently join the Madrid System. The Madrid System will not only allow for applications to originate from India, but will also allow the designation of India by any of the member countries. The Act has with the insertion of a new Chapter IVA, paved the way for applications to be filed under the Madrid Protocol and allows the Trademarks Registry to deal with international applications and international registrations. Who can seek the benefit of filing trademark applications under the Madrid Protocol? With regard to international applications originating from India, the Act allows the applicant or the registered proprietor to file international applications for trademark applications that have been filed (i.e. registration of the mark is pending) or trademark registrations that have been secured. This essentially means that if a person (including a body corporate) has filed a trademark application or has secured a registration for his trademark in India, he will be allowed to file trademark applications in other member countries, via a single application made under the Madrid Protocol. The Act, however, is silent on the timelines within which the applicant or the registered proprietor needs to file the international application. The Act also prescribes the procedures that have to be followed by the Registrar in the event India is designated as a country in an international application originating from another member country. 2

3 What is the effect of securing an international registration? A mark that has been filed through an international application in India will be afforded the benefit of registration from the date of the international registration of the trademark or the date of the recording in the register of the International Bureau about the extension of the protection of the mark in India. Such registration is valid for a period of ten years and may be renewed for subsequent periods of ten years thereafter. A grace period of six months is allowed for the renewal of the international registration subject to a surcharge fee being paid. Are there disadvantages to making a filing under the Madrid System? The main disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent. A tactic known as central attack is often employed, whereby when the home registration is subjected to evaluation, the international registration would be cancelled or limited to the same extent that the home registration was cancelled or limited. In the event that the trademark s registration is cancelled or removed in the home country, to avoid the same fate for all other applications pending under the Madrid System it is necessary to engage local agents in the applicable jurisdictions. Further, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted as the Madrid Protocol does not alter the individual standards for prosecuting trademarks established by member countries. India's membership in the Madrid System appears to be a progressive step not only for foreign companies who wish to register their trademarks in India, but also for Indian companies who can seek registration for their trademarks in any or all of the member countries of the Madrid System, in accordance with their business needs through a cost-effective, time-friendly and a hassle-free step. Contd.. 3

4 B. TRADEMARKS (AMENDMENT) ACT, 2010 The Trademarks (Amendment) Act, 2010 (the Act ) came into force on 8 th July Here, we briefly discuss the major amendments introduced by the Act. Accession to the Madrid Protocol On April 8, 2013, India joined the Madrid Protocol which entered into force on July 8, 2013, allowing foreign applicants to make filings in India and allowing Indian applicants to designate other countries for international filings. With the notification of the Act the Trademark (Amendment) Rules, 2013, the Madrid System allows trademark owners to simply fill in one form from their national office and pay one set of fees to obtain and modify an international registration. This application is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is considered the same as if it had been registered by that office. Changes to the applications (e.g. changes of name or address) and registration renewals are made easier through a single administrative process across all applicable jurisdictions. The protection afforded to the trademark can be extended by the trademark owner to one or more member jurisdictions at a later date and also to new jurisdictions which subsequently join the Madrid System. The Madrid System will not only allow for applications to originate from India, but will also allow the designation of India by any of the member countries. The Act has, with the insertion of a new Chapter IVA (Sections 36A to 36G both Sections inclusive), paved the way for applications to be filed under the Madrid Protocol and allows the Trademarks Registry to deal with international applications and international registrations. Opposition to Registration The time period for opposition to a registration (after the advertisement or readvertisement of the mark) has been increased from three (3) months to four (4) months. The Registrar does not have the power to increase this time period and the Act, under Section 21(1) provides for a uniform time limit of four (4) months in all cases. Registration Process Pursuant to a modification of Section 23(1), trademark applications have to be processed within a time period of eighteen (18) months. Registration of assignments and transmissions The Act simplifies the provisions related to transfer of ownership of trade marks by 4

5 assignment or transmission. Pursuant to an amendment made to Section 45, The Registrar has to register a person who becomes entitled by assignment / transmission of a trademark on receiving an application from such person. The Registrar may require such proof to be provided only if there is a reasonable about the veracity of any statement or document furnished by such person. Textile Goods Chapter X (containing Sections 79 to 82 both inclusive) relating to textile goods has been omitted in the Act mainly due to reasons of redundancy. ****** *Legal Advice Disclaimer: This update is for general information only and the contents of this update are not meant to be a substitute for obtaining legal advice. Please contact us if you require further clarifications on the subject. 5