The Indian Cabinet has approved a plan for the country to accede to the Madrid Protocol. If the proposal gets the backing of the Parliament, international trade mark owners will be able to extend their rights to the world’s second most populous country using the Madrid system, and Indian applicants will be able to extend their trade marks overseas. (See the detailed report in MIP)
What does this mean for trademark owners in the light of the Trade Marks Act, 1999?
1. Date of priority
While there has been a great deal of hue and cry in the USA (with the adoption of this Protocol), about the change in the date of priority (basically, instead of being calculated from the date of application in that, it an also be calculated from the application of the first convention country), in India, Section 11, read with Section 154(3), already embody the Protocol concept. Hence, no amendment would be necessary.
2. Removal of a mark on grounds of Non-Use
At the present moment, under Section 47 of the Trade Marks Act, 1999, a mark is liable to be removed from the register on grounds of non-use upon fulfillment of the following conditions:
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him…
(b) that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or
(c) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being…”
The Protocol would affect this provision in three ways:
1. Unlike Section 47 the protocol requires a mere signed declaration of intention to use a mark. Once such a declaration accompanies an application, the Protocol has no requirement for evaluating the bonafides of the applicant.
2. After the expiry of the 5 year period, the trademark becomes absolute. Hence, even if there is ‘no use’ for a continuous period of 5 years as under Section 47 (b), the trademark cannot be cancelled.
3. Cancellation/ Rectification of basic application
The main flipside to this system which is true across the board to India as well as other signatory countries is that the international registration goes if the basic application is rejected, revoked, cancelled or otherwise invalidated. This is rather unfair to the registrant as the grounds for cancellation/ rectification vary in stringency from country to country.
For instance the current Indian position in Section 47 lays down fairly stringent requirements to disprove non-use (the use of the term “bonafide” in conjunction with both actual use as well as intention to use), which, if not satisfied, may render a mark liable to rectification. Such a set of yardsticks may not be the norm for rectification of a mark on grounds of non-use in another contracting state, yet, if the basic application in India is rectified, the international registration is also automatically invalidated.
This is a serious drawback in the Madrid system. If an analogy were to be drawn to the PCT system, the understanding is clear that each country has a separate set of examination procedures and requirements and hence although the prosecution history of an application in one convention country is required to be provided in another under the PCT system, the grant or rejection of a patent in each country will be governed by the applicable national laws and there is no automatic revocation of a patent.
5. Copyrightable elements in a trademark
The present Indian statute in Section 14 requires the written consent of any living person or that of the legal heirs of any dead person to the use of any “element” (whether pictorial or literary) which suggests a connection with the said person.
Curiously the provision is not extended to all elements of a copyrightable nature which are sought to be registered as a trademark or a part thereof. Thus any artistic work which would otherwise be the subject matter of copyright protection can, theoretically under the Indian trademark act be protected as a trademark and thereby given perpetual statutory monopoly.
Section 5bis of the Madrid protocol however lays down a categorical prerequisite for the furnishing of “documentary evidence of the legitimacy of use of certain elements incorporated in a mark…” which include armorial bearings, portraits (not necessarily of persons living or dead), honorary distinctions, titles, etc. thereby carving out clear territories for legitimate trademark usage of subject matter that ordinarily deserves copyright protection from one that is registered as a trademark only to increase its statutory life.
Given that the Madrid protocol strives to achieve harmonization of trademark procedure – the definitions of what is registrable as a trademark may also require a dekko at this stage.
6. Address for service
Currently the structure of the Trade Marks Act 1999 is such that irrespective of the place of domicile or principal place of business of the applicant/ opponent, they have to furnish an address for service in India as the Trademark Registry will not send out notices to an overseas address. [See Section 18 (3)]. This provision, despite the practical difficulties that will creep in after India’s accession to the Madrid protocol is not likely to change. The reason is simple. In India today, only a person who is a qualified legal practitioner under the Indian Advocates Act can be a trademark agent – this provision does not grant reciprocity to practitioners enrolled under laws of different countries. This debate has been going on for a while now as to whether India will open its doors to foreign lawyers or not and so far the answer has been a “No”, compelling reasons, notwithstanding. A change in the seemingly innocuous provision requiring an Indian address for service to facilitate foreign applicants/ opponents could actually open this Pandora’s Box as it would tantamount to granting recognition to foreign trademark agents and consequently have the effect of subverting the Indian Advocates Act.
This is by no means an exhaustive analysis of the Madrid Protocol in the light of the Indian trademark law but just an attempt to throw up some issues that came to my mind; if anything, to get each one of you to think and start a dialogue!
Great!……food for thought