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SHOULD INDIA JOIN
MADRID PROTOCOL.
By
K.K. SHARMA
Advocate and IPR Consultant
WHAT IS IT ?
Madrid System of
International Registration of Trade Mark has 2 Components namely :
1.
MADRID AGREEMENT
2. MADRID
PROTOCOL
3. LANDMARKS ACHIEVED BY MADRID SYSTEM
OF INTERNATIONAL REGISTRATION OF TRADE MARKS.
4. ANALYSIS
1.
MADRID
AGREEMENT
The Madrid Agreement came
into force in 1891 and it has simplified procedure for filing application
for international registration of trademarks. In the absence of Madrid
Agreement, the applicant who wanted to have registration of their trademarks
in several countries was required to file separate applications in the
respective national trademark registry offices, which was time consuming and
expensive exercise. The applicant was required to pay attorney’s fees in all
these countries, which was sometimes beyond the scope of a small company,
and thus small sector companies with limited budget could not avail the
facility of international registration of their trademarks.
The Madrid agreement allows
anyone established or domiciled in any Madrid Agreement country, with the
trademark registration in his or her country of domicile, to file one
international application for registration of the trademark that can be
extended to one or more Madrid Agreement countries. The central
international application is filed with WIPO in GENEVA, designating to which
countries it is to be extended. WIPO then takes the responsibility for
passing the application on each of the designated national registry, where
application proceeds according to national trademark laws and procedure in
such designated countries. Although the Madrid Agreement provides facility
of registration of trademark in as many as countries, by making a single
application but it has the following limitations: -
In order to able to file an
international application with WIPO under Madrid Agreement, an applicant
must have an existing registration of trademark in his HOME COUNTRY. (Home
country means the country, where trademark owner is national or domicile or
has real or effective industrial or commercial establishment and such home
country must be a contracting party to a Madrid Agreement).
The Madrid Agreement has helped the trademark
owners of the country, which have less stringent examination system
(popularly called DEPOSIT SYSTEM, where there is little or no examination of
prior rights). It puts to disadvantage to the trademark owners of the
countries like India, U.K., Australia, where stringent examination system is
followed and filing rates of applications for registration of trademarks are
quite high.
For raising objection, the other requirement
under Madrid Agreement is that once an international application is filed
with WIPO and its designated trademark registry is required within 12 months
to raise objection about the registrability of the trademark. If no
objection is raised in that period, application automatically proceeds to
registration. In such situations the countries where filing rate is quite
high and strict examination procedures are followed, this time limit of 12
months may not be possible to adhere to and the national registry may fail
to raise objection to such registrations which may result in the
registration of unregistrable trademarks in the national registration
offices and block the national register of trade mark which may lead to
discrimination between the national applicants and international applicants.
The other disinteresting
feature of the Madrid Agreement is that if base registration is cancelled
within 5 years after the date of registration, all dependant applications/
registrations automatically stands cancelled.
Under Madrid Agreement, only
French is declared as official language. It is a discouraging factor for
member countries, where French is not the national language, translation or
transliteration apart from being very expensive, can fail to carry the
intentions of the applicants because there may be certain national words
which may have no equal or same word in French language. This assumes the
significance in the light of the fact that WIPO does not examine
applications other than compliance of formality.
The international registration is liable to be
cancelled if registration during its 5 years, is assigned to a person of
country other than the country of original applicant, if no consent is taken
from the national office of country of origin of new proprietor and
similarly an international registration cannot be assigned to person who is
not entitled to file an international application.
The Madrid system creates
series of national registrations and as such in case of infringement of
trademark it is subject to adjudication according to the national laws of
respective countries.
These may be the reasons
that total No. of members under Madrid Agreement is at a low figure of 11
only as against 65 countries who are members of Madrid Protocol.
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WHAT IS
MADRID PROTOCOL?
-
This agreement was adopted
by the assembly of Madrid Union, with effect from 1st April 96.
-
The broad objective of
Madrid Protocol is to make Madrid Agreement system more palatable.
-
It is open to anyone with
a pending applications, in protocol country, which is their home country.
This is the first advantage of protocol over Madrid Agreement – namely
possibility of filing national applications for registration of trademark
and immediately thereafter filing protocol applications with WIPO to
extend the protection to designated protocol countries.
-
The major differences
between Madrid Protocol and Madrid Agreement are as follows
-
a)
As international registration can be based either on an
application or a registration in the applicant’s own country, provided
this country is a contracting state. The original Madrid agreement allowed
the international registration to be based on a home registration.
-
b)
An international registration can also be based on an
application or a registration obtained at an intergovernmental
organization. This means that a community Trademark can be basis for
application or registration for an international registration.
-
c)
A contracting state has the right to declare that the time
limit during which it can object to the extension of the international
registration to its territory is to be 18 months, not 12 months as under
the agreement.
-
d)
A contracting State may also object to the extension to its
territory of the international registration on the grounds of an
opposition brought by a third party, and if so can reject the
international registration more than 18 months after the filing date. This
is subject to the proviso that the contracting State must have notified
the International Bureau when it acceded to the protocol of the
possibility that oppositions could be filed after this time limit.
-
e)
In the case of refusal based on opposition proceedings, the
notifications of rejection must be within seven months of the start of the
opposition period or one month from the expiry of the opposition period
whichever is shorter.
-
f)
Registration is for a period of 10 years, renewable for the
further period of 10 years, rather than the periods of 20 years as
specified in the Agreement.
-
g)
The International Registration becomes independent of the
home registration after 5 years. However, in the case of a successful
‘central attack’ during the first five years, the Proprietor has the right
to ‘transform’ the international registration into a series of national
applications all enjoying the same filing date, and, if applicable, the
same priority date as the international registration. Such transformation
must be effected within three months of the loss of the international
registration, must be for the same goods or services and must comply with
all other requirements of the national law concerned. Under the Madrid
Agreement, ‘central attack’ was fatal to all dependent national
registrations.
-
h)
A contracting state can ‘opt out’ of the distribution of
fees collected by the International Bureau and instead charge its own
fees. Such fees may not exceed the amount, which the contracting State’s
office would be entitled to receive from an applicant for a 10 year
registration or from a proprietor in respect of a 10 year renewal at that
office.
-
i)
The working languages of the protocol are French and
English.
Thus, it may be seen that
Protocol goes considerable way towards meeting the concerns, which
prevented Madrid agreement from gaining Universal acceptance, although in
many respects it is essentially same system.
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LANDMARKS ACHIEVED BY MADRID SYSTEM OF INTERNATIONAL REGISTRATION OF TRADE
MARKS.
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The following is the
data of landmark achievements of Madrid System as per WIPO report for
the year 2003.
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There are 76 members of
Madrid system (65 bound by Madrid Protocol and 11 members bound by
Madrid Agreement).
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A total of 23,872
applications were received and 21,850 registrations were published.
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Most of the applicants
designated 12 countries as the choice for registration of their
trademarks.
-
Spanish has been
included as a third working knowledge effective from 1st
April 2004. This is another healthy sign.
-
The trend of filing
applications indicates that the highest filing of applications was from
Germany followed by France, Switzerland and
Benelux.
-
Top 20 users of Madrid
system during the year 2003 were top players in pharmaceutical,
electronic and automobile industries. The list includes HENKEL, SANOFI,
UNILEVER, JONSON PHARMACEUTICAL, L’OREAL, NESTLE, BAYER, NOVARTIES,
SIEMENS, ITM, BOHRINGER, BIOFARMA, PHILIPS, ELECTRONICS, BASF, MERCK,
SYNGENTA, FIAT, KODAK, BENGRAIN.
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ANALYSIS
:
The Annual report of WIPO
for 2003 is indicative of few things namely, Madrid Protocol is gaining
ground as against Madrid Agreement due to formers flexible provisions,
which encourages trademark offices of developing countries to adopt.
Secondly the filing rate is quite high in case of member countries having
depository system as against the countries, which follow comprehensive
system of examination of applications for registration of trademark.
Thirdly major users of the system are pharma and electronic industry
followed by automobile industry. Indian Trademark Registry follows
rigorous system of examination of applications and the examination
standards are at par with U.K. and Australian trademark offices. The
filing rate of application for registration of trademarks in India is
quite high and the infrastructure and resources available with Indian TMR
are insufficient as compared to other countries having lesser or same
filing rates. Although the Indian Trademark Registry has cleared the
backlog of 5 years by adhoc measures and is in a position to join Madrid
Protocol but needs long term strategy not to allow backlog to resurface
after some time as the human mechanism cannot be sustained for long. This
needs strengthening of infrastructure & raising IT levels supports. The IT
system in Indian Trademarks Registry needs holistic total revamping for
which strong support is needed from Indian Govt. and WIPO and also
dedicated term of officers. At present the working strength of officers is
insufficient to discharge day to day statutory duties. If these officers
are diverted possibility of backlog resurfacing is not over ruled. One of
the solutions could be hiring experts in the technical as well as legal
fields. Having said so, is this exercise worthwhile! The initial
experience of other members of Madrid Union is that a few applications
were received. There is possibility of increase in such filing of
applications once U.S.A. joins Madrid System.
The analysis of Annual
report of trademark registry for the year 2002-03 indicates that the major
chunk of applications for registrations of trademark was filed in Class 5
i.e. 22,462 out of 94,120 applications filed for registrations of
trademark which roughly constitutes 4.19%, followed by applications in
class 16 i.e. 9113, which constitutes around 10.33%, then comes Class 30
i.e. 7905 (pertaining Coffee, Tea, Cocoa etc.) which constitutes around
11.90% and then Class 9 i.e. 7617 (pertaining to Scientific, Nortical,
Electrical) which constitutes roughly around 12.35%. Keeping aside the
cost factor, the pharma industry will be the major beneficiary in the
event India decides to join Madrid protocol and the benefit of pharma
industry will also be
percolated to other industries such as Coffee, Tea, Cocoa and Electronic
industry. The major gainer may be the corporate houses while the small
sector industries may not be the beneficiary because of the high cost.
There is another fear among Indian Legal fraternity that it may mean loss
of business to them but the advantage to the applicants outweighs the
disadvantages to legal fraternity. And one thing that is overlooked by
legal fraternity is that this will give them international exposure and in
any case because of litigation, the services of professionals will be
required and another area where the services will be required is to obtain
prior search of existing trademarks in the records of the national
trademark offices and also an opinion to ascertain whether such trademarks
qualifies for registration according to the National laws because WIPO at
present does not provide such facility.
In the fairness of the
scheme it seems beneficial for India to join Madrid protocol and help
Indian business community to get international registration of their
trademarks at affordable cost and in a time bound manner but before that
the infrastructure and the resources available to Indian trademark
registry needs to be strengthened and there is great need to train the
officials of TMR to handle such international applications by adequate
training and similar training to the legal fraternity is desirable with
assistance from WIPO.
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