Back Madrid Protocol beckons India
Poonam Arora
| Trademark laws |
As more and more Indian companies are going global, the time may be right for the country to join the 67-nation Madrid Protocol for trademark protection.
With Indian companies such as BPL, ITC, and Videocon going global, it is important that `trademarks' of these companies are provided protection. This calls for an international treaty harmonising the trademark law and practices of various countries. The Indian trademark practice of filing applications in each country for registration and tracing them simultaneously, is time-consuming and expensive. Therefore, India is realising the advantages of becoming a member of the Madrid System, which, inter alia, enables an applicant company/entity seeking international registration to file only one application and pay only one fee in local currency.
The Madrid System
The Madrid System, administered by the International Bureau of World Intellectual Property Organisation (WIPO), Geneva, permits the filing, registration and maintenance of trademark rights in more than one jurisdiction on a global basis. This system comprises two treaties; the Madrid Agreement concerning the International Registration of Marks, which was concluded in 1891 and came into force in 1892, and the Protocol relating to the Madrid Agreement, which came into operation on April 1, 1996. The Madrid Agreement and the Madrid Protocol were adopted at diplomatic conferences held in Madrid.
Currently, 67 countries are the contracting parties to the Madrid Protocol including China, Japan and the UK. TheUS became a party to it on November 2, 2003 and the European Community joined it on October 1, 2004.
Legal implications
In legal parlance, the Madrid System provides a mechanism whereby a trademark owner, who has an existing trademark application or registration in a member jurisdiction, may obtain an `international registration' for the trademark from the WIPO. The trademark owner may then extend the protection afforded to the international registration to one or more member jurisdictions through a process known as `designation'.
A useful feature of the Madrid System is that this protection may generally be extended to additional jurisdictions at any time, so as to cover geographies that subsequently join the Madrid System, or to such other territories the trademark owner may choose. Additionally, an international mark so registered under the Madrid system is equivalent to an application or a registration of the same mark affected 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 the same as if it had been registered by that office.
Pros and cons
In a nutshell, the primary advantage of the Madrid System is that it allows a trademark owner to obtain protection in any or all member-states by filing one application in one jurisdiction with one set of fees, and make any change — of name, address, etc., — and renew registration across all applicable jurisdictions through a single administrative process. But the one disadvantage of the Madrid System is that any refusal, withdrawal or cancellation of the basic application or basic registration of a trademark 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.
For instance, if a basic application covers "clothing, headgear and footwear" and "headgear" is deleted for whatever reason, the international registration will only cover "clothing and footwear". The protection afforded by the international registration in each designated member jurisdiction will, therefore, only extend to "clothing and footwear".
By the same analogy, in this example, if the basic application had been rejected as a whole, the international registration would also be totally refused. The effects of a successful "central attack" can be mitigated by transforming the international registration into a series of applications in each jurisdictions designated by the international registration by `conversion' process. Although conversion is an expensive option of last resort, the resulting applications will receive the registration date of the international registration as their filing date.
The costs savings, which usually result from using the Madrid system, are negated by the requirement to use local agents in the applicable jurisdiction if any problem arises.
In today's competitive global market, protection of trademarks and service marks by multinational companies assumes great significance as ownership of a trademark with good image and reputation provides a company with a competitive edge. It enables companies differentiate themselves and their products from those of the competition and thereby plays a pivotal role in brand-building.
Recognising the importance of protecting their trademarks through registration, Indian companies with interests abroad have already applied/obtained trademark registration in other countries.
Indian context
Further, the importance of the Madrid system may be viewed in terms of the existing trademark laws in India that are territorial in nature and have no international application. Unlike the present Indian patent laws, which provide for international filing of patents under Patent Co-operation Treaty (PCT), registration of one international trademark is not possible under the current trademark laws in India.
Apparently, an important implication of implementing the Madrid system in India will be the requirement of additional staffing in the Trademark Offices and strengthening of IT infrastructure and IT trained personnel, which, presumably, will increase the costs of filing domestic applications. Consequently, the government and local trademark attorneys may lose out, as it would reduce local filings considerably.
Considering the above, though the Madrid Protocol is not the panacea to the problems of national practice, it is the best system now available as, to some extent, it simplifies trademark filings and may reduce costs.
(The author, a lawyer, is an Associate with Corporate Law Group, specialising in trademarks, patents, and copyright.)
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