Trademark registration has become easier for Indian and foreign companies

Rai S Mittal

India this week joined the Madrid Protocol, which will enable domestic companies and entrepreneurs to obtain cost-effective global trademark registrations. This is being seen as an opportunity for Indian companies, which are increasing their global footprint, to register trademarks in member countries of the Protocol through a single application.

Under the aegis of the Madrid Protocol, hindrances like attorney fees, translations costs and complicated procedures are set to reduce substantially, thereby leading to a scenario where Indian rights holders will be forthcoming in filing trademark applications abroad. Of course, this also gives brand owners around the world the ability to extend their protection to the important Indian market, through a single, simplified and cost-effective procedure.

With India joining the Protocol, this brings the total number of members of this international trademark system to 90.

Nature of registration

Registration through the Madrid system does not create an international right; rather, it creates a bundle of national rights able to be administered centrally. Madrid provides a mechanism for obtaining trademark protection in many countries around the world which is more effective than seeking protection separately in each individual country or jurisdiction of interest. The Madrid system also seeks to provide a mechanism whereby a trademark owner who has an existing trademark application or registration in a member jurisdiction may extend the protection to one or more member jurisdictions and even to new jurisdictions which subsequently join Madrid.

The Madrid Protocol does not change local laws on the acquisition of trademark rights, application formalities, and use requirements. Examination by National Trademark Offices and local rights still remain in any International Registration application, which will continue to be subject to local laws. For example, the Trademark Office of each Designated Country is entitled to refuse protection in whole or in part.

Working and efficacy

Under the WIPO-administered Madrid system, a trademark owner may protect a mark in a number of countries, plus the European Union, or by selecting a few, by filing one application in their national office, in one language, with one set of fees, in one currency. Costs and logistic difficulties involved in overseas trademark fillings are thus greatly reduced.

Trademark owners also benefit from online tools to search existing marks, browse the WIPO gazette, estimate filing costs, make e-payments, seek renewals and check registration status.

The Madrid system allows a trademark owner to make any changes (e.g. changes of name or address) and renew registrations across all applicable jurisdictions through a single administrative process.

The unique service offered by the Madrid system, thus, eases the registration and management of a mark, which is particularly useful in case a company having a large portfolio of trademarks. Further, this will ensure a period of 18 months for the grant of an application to register a trademark, in line with the provisions of the Madrid Protocol.

However, one disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration 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. The cost savings which usually result from using the Madrid system may also be negated to some extent by the requirement to use local agents in the applicable jurisdiction if any problems arise.

Indian scenario

The Indian IP Office would do well to adapt well to the changing world and for the smooth functioning of the Madrid system in India. The present backlog of examinations at the IP Office needs to be cleared very fast. The IP Office should be provided sufficient competent staff and upgraded technology. It also needs to make its processes more transparent and the records more accurate. A lot many changes in procedures and practice will need to be introduced and implemented in India for a smooth transition.

The year 2012 saw the highest number of international trademark applications ever filed under the Madrid system, with 44,018 applications. With more than 100 years of experience, the Madrid system has facilitated businesses in establishing more than a million marks worldwide and it is hoped that India will greatly benefit from the system.

The author is partner, and head of the intellectual property practice group, Titus & Co