The Madrid Protocol & the Indian Trademarks Act Rameshwari

Introduction to the Madrid Protocol The Madrid System functions under the Madrid Agreement (1891) and the Madrid Protocol (1989). It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. The system enables the registration of trademarks in multiple jurisdictions worldwide that are part of Madrid Unions 85 member countries by filing a single application in the Applicants national trademark office, or regional trademark office. Steps taken to ratify the Madrid Protocol in India The Trademark (Amendment) Bill, 2007 was originally introduced in Parliament on 23rd August, 2007. Since the House did not take up the Bill for consideration in the prescribed time, the Bill lapsed and had to be re-introduced once again in 2009. The Standing Committee submitted its report in March, 2008. All but one of the recommendations of the Committee was adopted by the Government and the Trademark Amendment Bill as re-introduced in the year 2009 incorporated all of these changes. The Amendments proposed by the original Trademark Amendment Bill, 2007: Passed as an Act in 2010. Surprisingly, India has enacted this legislation before signing the Madrid Protocol. Hopefully the Government will move swiftly to sign the Protocol so as to operate the provisions of the amendments. In 2007, the Union Cabinet had given the go ahead to accede to the Madrid Protocol. The Bill as introduced in 2007 proposes the following amendments:

An amendment to Section 21 of the Trademarks Act, 1999 to do away with the one month discretionary extension that the Registrar could grant in the case of an opposition to an advertised trademark. The amendment therefore restricts the time period to file an opposition to only 3 months from the date of registration. An amendment to Section 23 of the Trademarks Act, 1999 to ensure that a trademark is registered within 18 months of filing the trademark application. An amendment to insert Chapter IVA which would have new provisions such as Section 36A, Section 36B, Section 36C, Section 36D, Section 36E, Section 36F, Section 36G. These are the key provisions incorporating and implementing the provisions of the Madrid Protocol. An amendment to delete Sections 40, 41 & 42 of the Trademark Act, 1999. Section 40 places a restriction on assignment or transmission of trademarks where multiple exclusive rights

would be created. Section 41 places a restriction on assignment or transmission where exclusive rights would be created in different parts of India. Section 42 states the conditions for assignments otherwise than in connection with the goodwill of a business.

An amendment to Section 45 of the Trademark Act, 1999 to ensure that a person who has an assignee or licencee of a trademark cannot inititate any trademark infringement proceedings under the Trademark Act, 1999 until such time that the assignment or transmission has been registered with the Registrar of Trademarks under Section 45(1) of the Trademarks Act, 1999. An amendment to delete Chapter X of the Trademarks Act, 1999. This chapter deals with special provisions for trademarks relating to 'textile goods'. Miscellaneous amendments to Sections 150 and 157 of the Trademarks Act, 1999 in order to ensure consistency in the language of the remaining amendments.

Procedure under the Madrid Protocol

Upon India being a signatory to the Madrid Protocol, applicant while making an application to National Office may select from the list of the member countries where he seeks protection of mark. The National Office in the country of origin examines whether the international application corresponds to the basic application and complies with home state requirements. On the National Office being satisfied, it forwards the application to WIPO. WIPO examines the application and the International Bureau places the mark in the International Register of Trade Marks. The International Bureau advertises the mark and passes on the details of the application to the designated countries listed in the application for their consideration, consequent approval and granting of registration. Member States designated in the application have twelve months to notify WIPO of any objections, but under special provision United Kingdom has eighteen months.

If any Member State stated in the application does not send any objection within the prescribed period time limit it is deemed to be accepted by the Member State. The Practical issues involved Firstly, every country will have independent standards for prosecution of trademark applications and indeed some countries may have much stringent procedures for securing and/or maintaining trademark registrations. Also, the basic principles of trademark law may differ from country to country as, for instance, an invented mark or a unique mark in India may be deemed as a generic or even obscene mark in some other country. Therefore, there is a need to perhaps introduce a

common appraisal system with identified minimum thresholds for assessments. Secondly, the Bill does not differentiate between trademarks and Certification Trademarks or Collective Trademarks and does not lay down any procedures for their treatment. This will have to be clarified sooner rather than later if the Madrid Protocol has to be successfully implemented in India. Most significantly, the implementation of the Madrid Protocol will lead to a very tricky conflict with Section 24 of the Advocates Act, 1961 which stipulates that a national of any other country may be admitted as an advocate, if citizens of India, duly qualified, are permitted to practise law in that other country. Now the anomaly that arises is that the Trademark Rules, 2002, contains a provision that every applicant should have an address for service in India. If a foreign attorney files an application in India without an address for service in India then the Trademark Registry will not be able to correspond with such applicant/attorney as the Rules to do not contain any provisions to this effect. Assuming that this technical aberration is sorted out and the rules are duly amended, another problem then arises. Once the trademark application is prosecuted and the Applicants attorney files a response to the examination report, then such advice may be deemed as being contrary to the provisions of Section 24 of the Advocates Act, 1961. To circumvent this inconsistency, foreign attorneys may end up seeking assistance from local attorneys which would again take us to a preMadrid Protocol scenario. Sources 1. http://spicyipindia.blogspot.in/2009/12/spicyip-guest-post-trademarksamendment.html 2. http://www.wipo.int/madrid/en/