Trademark

SpicyIP Guest Post: The Trademarks (Amendment) Bill 2009 – Implementing the Madrid Protocol


SpicyIP is proud to bring you a guest post, by Ankit Prakash, on the proposed amendments to the Trademarks Act – a topic that should have been covered ages ago.
Ankit is currently a Senior Associate with Anand and Anand where he specialises in trademark prosecutions, oppositions, assignments, licences and agreements. He is widely considered to be one the rising stars on the trademark prosecution scene in India and I’m extremely thankful to him for contributing this insightful guest post.


The Trademarks (Amendment) Bill 2009: Implementing the Madrid Protocol
The Trademarks (Amendment) Bill 2009, which was first tabled in Parliament in the year 2007 and re-introduced in the year 2009, is significant step towards alignment of the Indian intellectual property regime with existing global norms.

The Bill, amongst other reforms, would implement the Madrid Protocol in India and make trademark applications analogous to Patent Cooperation Treaty (PCT) filings. In other words, applicants will no longer be required to file a separate trademark application in India in order to secure statutory rights in a trademark. Like PCT applications, an applicant may simply file a trademark application in any Madrid Protocol member country and choose India as one of the countries in which it wishes to seek trademark registration. This should be beneficial to applicants since costs and time would be saved.

Further, the bill prescribes a period of 18 months for the grant of an application to register a trademark, in line with the provisions of the Madrid Protocol.

Ratification of the Madrid Protocol is bound to have a noteworthy affect not only on the practice of trademark attorneys in India but also trademark rights holders in India. Proprietors of trademarks will be able to file trademark applications in countries other than India as the costs and logistic difficulties involved in overseas trademark fillings will be greatly reduced. Under the aegis of the Madrid Protocol, hindrances like attorney fees, translations costs, complicated procedures are set to reduce thereby leading to a scenario where Indian rights holders will be forthcoming in filing trademark applications abroad. However, on the flip side, the number of trademark applications filed by foreign entities in India, are certain to witness a decline.

Before the Madrid Protocol is adopted in earnest in India, few practical issues will have to be first clarified. 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 Applicant’s 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 pre-Madrid Protocol scenario.

The Trademark Registries across India are working at breakneck speed to upgrade their infrastructure to enable a seamless transition after the Bill comes into force and the Madrid Protocol becomes a reality in India.

Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

5 comments.

  1. AvatarAnonymous

    “Before the Madras Protocol is adopted in earnest in India, few practical issues will have to be first clarified.”

    Ahem…”Madras protocol”??? looks like someone went desi here 🙂 but honestly, the post is a good one.

    Reply
  2. AvatarAnonymous

    Can you (Mr.Ankit Pakash)please further clarify about the conflict which arises between Sec.24 of Advocates Act and Madrid Protocol. (Which Article of Protocol is contradicting Sec 24 of Advocates Act)

    Examiner of Trade Marks
    New Delhi.

    Reply
  3. AvatarAnonymous

    On reading the Trade Marks (Amendment) Bill, 2009 it is my understanding that an amendment is proposed in Section 45 of the Trade Marks Act, 1999 whereby a person entitled to a registered trade mark by assignment or transmission is merely required to apply to the Registrar in the prescribed manner and the Registrar shall register him as the proprietor of the mark and the applicant would be required to prove title only where there is a reasonable doubt about the veracity of any statement or any document furnished.

    As per Section 45 of the Trade Marks Act, 1999 prevailing as on date such a person is required to file an application as well as prove his title to the Registrar’s satisfaction in order to be registered as the proprietor of the trade mark.

    I request for a clarification on whether, from a practical perspective, it is advisable to provide for such an absolute entitlement and allowance (since the word “shall” is used) of registration of the applicant as proprietor of the mark by merely making an application to the Registrar without proof of title unless some reasonable doubt (a vague term) appears.

    Reply
  4. AvatarAnonymous

    On reading the Trade Marks (Amendment) Bill, 2009 it is my understanding that an amendment is proposed in Section 45 of the Trade Marks Act, 1999 whereby a person entitled to a registered trade mark by assignment or transmission is merely required to apply to the Registrar in the prescribed manner and the Registrar shall register him as the proprietor of the mark and the applicant would be required to prove title only where there is a reasonable doubt about the veracity of any statement or any document furnished.

    As per Section 45 of the Trade Marks Act, 1999 as prevailing on date such a person is required to file an application as well as prove his title to the Registrar’s satisfaction in order to be registered as the proprietor of the trade mark.

    I request for a clarification on whether, from a practical perspective, it is advisable to provide for such an absolute entitlement and allowance (since the word “shall” is used) of registration of the applicant as proprietor of the mark by merely making an application to the Registrar without proof of title unless some reasonable doubt (a vague term) appears.

    Reply

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