INTA Bulletin

April 15, 2015 Vol. 70 No. 8 Back to Bulletin Main Page

India’s Accession to the Madrid Protocol and its Impact on Brand Owners

At the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, on April 8, 2013, in anticipation of India’s accession to the Madrid Protocol, WIPO Director General Francis Gurry said that “India’s accession to the Madrid System is a major milestone in bringing us closer to transforming the Madrid System into a system with truly global reach.”
India became the Madrid Protocol’s 90th member when it joined the System in July 2013. The Madrid Protocol enables local businesses to protect their trademarks in multiple jurisdictions by filing one application with one set of fees. By taking advantage of the Madrid Protocol, brand owners will be able to streamline registration of international trademarks, which should bring greater certainty for doing business in India.

Previously, Indian brand owners that wanted to protect their marks in other jurisdictions had to hire local counsel in each jurisdiction and understand the relevant laws, which could be costly and time-consuming. Similarly, brand owners outside of India had to engage local counsel in order to register their trademarks in India. The registration process was often lengthy. A smooth registration process (through domestic filing) could take up to two to three years.

The Indian legislators have recognized the need to amend the trademark laws in harmony with other mandates aimed at making the country more globally accessible. The first major change was initiated in 1999 when the new Act (of 1999, effective from 2003) was enacted, repealing the Trade and Merchandise Marks Act of 1958 (the old Act). With India’s accession to the Madrid Protocol in sight, the Trade Marks Act, 1999, was amended in 2010 to include Chapter IV (containing sections 36A to 36G). This chapter specifically focuses on the “Special Provisions relating to Protection of Trademarks through international registration under the Madrid Protocol.”

Many trademark practitioners feared that India’s Trade Marks Registry would be unable to meet the tight deadlines imposed by the Madrid Protocol. Extensive backlogs of work at the Trade Marks Registry meant that new applications were often queued for long periods of time. Considering the compounding accumulation of pending matters, there were concerns about the Trade Marks Registry’s capability to effectively and efficiently handle international and domestic filings simultaneously.

However, the Controller General of Patents, Designs and Trade Marks, Chaitanya Prasad, identified a number of solutions to these problems during INTA’s two most recent delegation visits to India, in February 2014 and in February 2015. As a result, there have already been many improvements in the Trade Marks Registry’s practices and procedures over the past year, despite 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 Trade Marks Registry by owner.

Initiatives Taken by the Trade Marks Registry
Prior to India’s accession to the Madrid Protocol in July 2013, the Trade Marks Registry initiated training programs for its officials and staff to gear up for the anticipated influx of applications, both from Indian and foreign companies. Detailed “Guidelines for functioning under the Madrid Protocol” were issued by the Trade Marks Registry to facilitate better understanding of the procedure for both applicants and Trade Marks Registry personnel.

A comprehensive system of e-filing was also introduced to minimize the paperwork at Trade Marks Registry offices. Now, papers received offline are being digitized and updated in real time. The offices have increased recruitment and invested in human resources programs and technical training programs to help examiners become adept at reviewing international filings.
The introduction of an e-filing system is a boon for local trademark attorneys. The process is simple and the interface user-friendly. This, in turn, saves time and resources in preparing documentation and filing the same. Where a basic paper application once had to be filed in triplicate, after the introduction of the e-filing system, the details simply need to be filled in the respective fields on the online portal of the Trade Marks Registry. Also, while in the case of offline filings the requests filed took time to be scanned and taken on record, the process of online filing facilitates the updating of online records of the Trade Marks Registry.

Further, efforts have been made to inform the trademark attorneys and public regarding the protection of trademarks through the Madrid Protocol and to give training to Trade Marks Registry officials and staff regarding the Madrid Protocol.

Thus, an unexpected benefit borne out of India’s accession to the Madrid Protocol has been a self-initiated improvement in the standards and methods of the Trade Marks Registry. Trade Marks Registry officials are under pressure to deliver on the international filings within a stipulated timeframe, and they are also dealing with domestic filings more quickly. Initiatives have been taken to conduct annual hearing drives to dispose of matters wherein post-registration requests have been filed. This has helped the Trade Marks Registry not only clear its dockets, but has also shown considerable improvement in shortening the timeframe to process the applications from the preliminary stage to the examination stage. For example, if the formalities are completed at filing, a domestic application is examined within eight to ten months.

The Future Looks Promising
India’s accession to the Madrid Protocol has offered the unique benefit to all domestic companies and entrepreneurs to protect their trademark portfolios across the world. Likewise, the option of choosing India as a designated country has eased the economics of filing trademark applications for many international parties.

If we compare the costs that an international brand owner incurs in designating India versus local filing (up to registration) for one mark in one class, the difference in the official fee is small. To designate India in an existing international registration, a cost of CHF 62 is incurred. On the other hand, the official filing fee for a domestic application for registration (in India) would be INR 3,500 (CHF 51.55). In order to file a domestic application, a local attorney would have to be engaged in regular follow-ups with the Trade Marks Registry on the progress of the application. These costs would add to the overall cost of attaining a registration.

India as the Country of Origin
Since the Madrid Protocol came into force, several Indian companies have expressed interest in securing international registration for their trademarks. A few domestic entities have filed applications for international registration of their marks with India as the country of origin. The number stands at 174 (approximately) as of April 7, 2015. This number is still low. Some of the Indian brands that have begun taking advantage of the new provisions include: SG, JOLLY, Birla Cellulose Fibres From Nature, HD, SANCHITA, SKORE CONDOMS, D3, SOLIS, DHOOM 3, DHOOM, NUPRIN, KIDICARE and NIMBLE ELECTRIC. This list, of course, is not exhaustive. A complete list can be retrieved from WIPO’s Romarian database.

The small number of domestic applications for securing international registration may be attributed to the fact that India’s accession to the Madrid Protocol has been an extremely recent development. Naturally, it will take time for Indian entrepreneurs and companies to understand fully the Madrid Protocol nuances and use to maximum advantage the international registration procedure that is available.

India as a Designated Contracting Party
Since Madrid implementation, international parties have also chosen to broaden the protection of their trademark portfolio to include India. As per the information available in the WIPO database mentioned above, as many as 11,044 marks registered with WIPO have designated India a contracting party (i.e., these marks shall enjoy protection within India under the Madrid Protocol). This number is high owing to the fact that such marks have mostly originated in countries such as the United States and other European countries, many of which have had both the Madrid Agreement and Madrid Protocol in force for several years. Many international brand owners have chosen to take the designation route as opposed to filing local applications, as the former appears to be less burdensome.

Unresolved Issues
Despite the many advantages of India’s accession to the Madrid Protocol, there are certain unresolved issues. For example, according to the provisions of the Indian Trade Marks Act, 1999, if the specification of goods/services exceeds 500 characters, the applicant would be required to pay INR 10 (USD 0.16) per extra character. There is no such provision in the Madrid Protocol. This raises the question whether the applicant actually would save money using the Madrid Protocol route or whether the international registration would suffer from inherent defects.

There is a possibility that an examiner at the Trade Marks Registry could raise an objection to this effect and ask the applicant to pay the additional fee. Once again, the question is whether the applicant could pay directly and how (as there are laws governing foreign currency coming into India) or whether the applicant would have to engage a local lawyer, which could undermine the cost benefits of the Madrid Protocol.

In another example, while India considers use to be important and acknowledges transborder use as use in India, not many countries subscribe to the same view. In the United States, for instance, only actual use in commerce in the United States is considered use. Transborder use is not taken into consideration. In this scenario, if India were the country of origin for the international registration and the United States were a designated contracting party, it is unclear which provisions would govern a claim of use in such an application. Would the applicant have to claim use in each designated country or would the application have to be filed on an “intent-to-use” basis, despite the trademark having been put to use in India (the country of origin)?

The above are just a few examples of the complexities involved in filing an application for international registration. Whether such issues will be speedily resolved or become a Gordian Knot remains to be seen.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association