Accession moves implementation of Madrid Protocol closer


India acceded to the Madrid Protocol in February of 2007. However, accession to the protocol is only the first step. The Indian Parliament is currently reviewing a bill that will make certain amendments to the Trademarks Act 1999 and introduce regulations which will allow for the final implementation of the protocol in that country.

The advantages of the Madrid Protocol have been felt the world over. With specific reference to India, accession will enable foreign entities to register their trademarks much faster than the current minimum of 24 months waiting time if an application is filed directly with the Indian Trademarks Office. One of the disadvantages of the protocol appears to be the 'central attack' provision which states that if a basic registration or an application is refused within the first five years of the date of application then the international registration will be invalid for the remaining countries. Of course, the choice of converting the applications in the remaining countries into domestic applications remains open for three months; however, this is a cumbersome process. Interestingly, India may face fewer problems in terms of invalidation since a cancellation petition on the grounds of non-use in India cannot be invoked until after 63 months from the date on which a mark is actually entered on the register. Further, unlike an opposition proceeding the onus on why the registration ought to be removed from the register lies heavily on the petitioner rather than the registered proprietor. Only a person aggrieved within the meaning of the Trademarks Act may initiate a cancellation petition. The grounds of a rectification petition are difficult to establish and thus the central attack provisions may not pose a significant threat to India so far as basic registrations are concerned.

The good news for applicants extending their registrations into India via the protocol is that the objections put forth by examiners while analyzing an application normally revolve around the distinctiveness of the mark and prior conflicting applications. Since use of the mark in India is not a pre-requisite for filing an application, applicants may be able to overcome such objections on the basis of inherent or acquired distinctiveness of the mark by virtue of international use.

While the Madrid Protocol will obviously be useful in order to gain quicker registrations in India it is relevant to note that the fee for filing a national application is as low as $55. Thus, foreign entities may wish to continue to file national applications instead of extending their international registrations.

The Indian Trademarks Office will be required to implement effective measures to clear its backlog to be in a position to cope with applications from the World Intellectual Property Organization's International Bureau. The Trademarks Office has already come a long way in the past few years as new applications may now be examined within four to six months from the date of filing. However, it is the backlog of applications that prevents the Trademarks Office from meeting world standards.

Among other things, the Trademarks Office would require large-scale investment to bring its IT resources up to scratch. Even though this has been done to some extent, for example the Trademarks Journal is now available online, the availability search and electronic filing systems need urgent updating.

Monica Datta, Anand And Anand Advocates, New Delhi

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