With a burgeoning middle class larger than the entire population of Europe, an economy growing faster than that of most nations and an insatiable consumer appetite for trademarked products, India holds both challenges and opportunities for obtaining and enforcing intellectual property rights.
For several years, and in response to the calls for assistance by its members, INTA has set India in its sights as a strategic priority. Devoting resources to establish a means to grow membership through its representative in Mumbai; forming an Indian Business Group of corporate members to guide strategy; holding forums and roundtables on key issues; sending delegations to meet officials—notably then INTA President Toe Su Aung (BatMark Limited, UK) in 2013—joining forces with local IP-related associations; and focusing the power of its committee system, INTA is now poised to become a major player in the Indian trademark arena.
To further the Association’s commitment to India, INTA’s President Mei-lan Stark (Fox Entertainment Group, USA) headed a delegation to meet with members, government officials and the media during the week of February 2, 2014. Joining Ms. Stark were INTA CEO Etienne Sanz de Acedo, Director, External Relations Bruce MacPherson and India Representative Simran Daryanani Zainulbhai.
The delegation, which conducted meetings in New Delhi and Mumbai, included long-time supporters of the Association’s efforts in India, including Pravin Anand (Anand &Anand), Hemant Singh (Intl Advocare), INTA Board Member Shwetasree Majumder (Fidus Law Chambers) and Volunteer Service Award winner Murli Balasubramanian (Castrol India Limited). Further bolstering the delegation’s reputation was the participation of notable Indian companies such as Reliance Industries Ltd. and Asian Paints Ltd. Many of these volunteers also participated in the first discussion of INTA’s new India Global Advisory Council in late February, which will serve as a vehicle to make recommendations on actions to be taken by the Association on key issues affecting Indian trademark owners.
Given the challenges facing the five trademark registries in India, the delegation engaged in a long and productive discussion with the Controller General of Patents, Designs and Trade Marks, Chaitanya Prasad (above, right with Ms. Stark). Surrounded by his top staff, Mr. Prasad welcomed Ms. Stark’s acknowledgement of the many improvements in the Trade Marks Registry’s practices and procedures over the past year, given the more than 180,000 applications it received. These include increased electronic filing capabilities, with more than 30 forms now available online, increased transparency in the status of cases, such as the introduction of Quick Response codes to facilitate applications, and the ability to search the Registry by owner.
The Controller General outlined priorities for the Registry this year, the most important being the backlog in applications and oppositions. Initiatives will include “drives” to focus resources, albeit limited, on problem areas and better tracking of and reporting on office statistics in order to measure improvement. Mr. Prasad also is keenly interested in learning from INTA about how other trademark offices process applications for non-traditional marks, such as sound and scent marks. To this end, the Chair of the new India IP Offices Subcommittee, Ranjan Narula (RNA), presented Mr. Prasad with a list of various issues for discussion in the near future. The Controller General suggested that INTA prioritize the issues and provide more details with recommendations on how they might be resolved.
Of course, the biggest news in 2013 was India’s accession to the Madrid Protocol for the International Registration of Marks. Since the July 2013 implementation of the Protocol, the Registry has received more than 4,000 international applications through designations of India by Madrid users. But, given Indian trademark owners’ unfamiliarity with and lack of understanding about the advantages of the Madrid System, fewer than 100 international applications have been filed through the Office. Mr. Prasad encouraged INTA to assist in educating Indian trademark owners about Madrid by providing information and holding seminars on filing strategies. In turn, Ms. Stark offered access to the experts, such as those on the Association’s Madrid System Subcommittee, and their vast experience with Madrid Protocol member country offices and processes. We are eager to share our knowledge and resources,” Ms. Stark said.
To show support for the Registry, but also to encourage both political and financial support from New Delhi, the delegation met with the Joint Secretary for the Department of Industrial Policy and Promotion (DIPP), Mr. D.V. Prasad. As the DIPP is the umbrella department for the Office of the Controller-General of Patents, Designs and Trade Marks, the Joint Secretary was key to winning India’s accession to the Madrid Protocol and drafting its implementing rules. He was joined in the meeting by the staff of the New Delhi Trade Marks Registry. For his part, Mr. Prasad was frank regarding the need to increase the trademark registries’ resources, especially with respect to examiners and information technology.
The Joint Secretary appeared to be amenable to hearing more from INTA about how India’s accession to the Singapore Treaty on the Law of Trademarks would improve the procedures of the trademark registries. He also indicated his willingness to entertain other improvements in the Trade Marks Act but said that this should be done in a comprehensive manner rather than through piecemeal legislation.
Turning to enforcement, the INTA delegation met with Sandeep Kumar, the Commissioner of Customs, and Sathish Kumar Reddy, Director (International Customs Division), Central Board of Excise and Customs (CBEC). The key concern of India Customs centered on its online recordal system for trademarks, which was established in 2007. Mr. Kumar noted the disappointingly low number of recordals by trademark owners, with only 650 to date. He asked INTA to encourage its members with trademark registrations in India to record their marks with Customs. He also noted the need for correct contact information to be provided on companies’ websites in the event that suspected goods are detained.
Members of INTA’s delegation responded by noting the dilemma of not being able to record their marks in a timely manner as a result of the backlog at the trademark registries and delays in the registration process. Customs was sympathetic and cautiously indicated that it would entertain suggestions on how this might be resolved under current law.
The second issue raised by INTA was strict, mandatory bond requirements and their execution. The delegation urged more flexibility and transparency in the bonding process. Ms. Stark noted that “Customs seemed very receptive to feedback from users and appeared eager to engage the user community in seeking to improve operational efficiency.”
Overall, the members of the INTA delegation were highly encouraged by the meetings. Despite the challenges faced by the Indian government in granting and enforcing trademark rights, there appears to be a genuine willingness to work with the Association in seeking solutions to issues and responding to users. To be sure, there is a lot to be done in India but INTA will be there for the long run.
The INTA Bulletin
will run a detailed interview with Mr. Chaitanya Prasad in an upcoming issue, including an update on the Office’s latest projects and goals for the future.
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accuracy of items in the INTA Bulletin, readers are urged to check
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© 2014 International Trademark Association