I had previously blogged about India's accession to the Madrid Protocol for the International Registration of Marks. Pursuant to this, the provisions relating to the registration of trademarks under the Madrid Protocol has come into force in India from the 8th of July, 2013. In order to enable this process, the Trademarks Act and Rules has been amended in 2010 and 2013 respectively. The Amendments to the Trademark Rules have also come into force from the same date. The Trademark Amendment Act and Rules can be found here and here.
Therefore, under the current system, any person, natural or legal, who is domiciled in India or is a national of India or which has a real and effective industrial or commercial establishment in India can get their registered trademarks or their pending applications for registration of trademarks registered under the Madrid Protocol by way of an online application. The Office of the Controller General Patents, Designs and Trademarks has issued a public notice stating that a gateway for making such an online application has been made available on the official website. The public notice also provides a contact id to direct queries about the Madrid Protocol and a telephone number for assistance with the online application and the other connected functions.
It has already been covered in our previous posts by Prashant that the Trademark Registry is grossly understaffed and that it is already suffering under a huge backlog. These posts are available here and here. At this juncture, when the Madrid protocol is coming into effect in India, it is likely to add substantial workload to the Trademark Registry. The registration of a trademark under the Madrid Protocol would require the satisfaction of a number of procedural formalities laid down in Chapter IVA of the Trademark Amendment Act, 2010 and the corresponding Trademark Rules, 2013, Therefore, in order to have a better functioning and more efficient Trademark protection system, it is of utmost importance that the Trademark Registry be provided the manpower and the resources that it requires.
Albeit it is going to add some workload to the Trademarks Registry (TMR), I doubt it will flood the TMR with international applications. Primary reason: India + WIPO has declared that “in accordance with Article 14(5) of the Protocol, this Contracting Party(India) has declared that the protection resulting from any international registration effected under this Protocol before the date of entry into force of this Protocol with respect to it cannot be extended to it”. Meaning that for the existing (filed before 8th july’13) international trademarks, no subsequent designation can be made with respect to India. Implying that, there will/may be a steady flow of applications but not a pile load of them. Having said that , I believe they will be able to handle it. The online filing portal is well done, and is pretty groovy. Yes, the TMR wouldn’t mind extra man power, but those the available personals seem to be acquainted with the forth coming work and procedures to be adopted. Also, don’t forget , everything’s online ! that’s means, no more misplacement of files, no more piles of papers on their desks dampening their day and no more physical dispatch and problems thereof ! I think they are going to do well .
ReplyDeleteAs of yesterday, the CG confirmed that there have been 10-13 international applications filed as India – office of origin ; whereas, it may take a while to ascertain the volume of international applications designating India.
How are they going to handle it keeping in view the situation prevailing. See for example: A proposed applicant wants to file the application under the protocol but he is an assignee of a mark, an application for bringing on record him as the subsequent proprietor thereof having been filed just one day before the proposed application.
ReplyDeleteNow there are requests for bringing on record the subsequent proprietors, which were filed decades ago and are pending inspite of the so called special drive by the TM Office. Thousands of applications are pending on account of very petty and superfluous objections. In most of the cases rather there are no objections, but they are pending just for the sake of no interest being shown by the officials. Now they are asking for a non pendency of any litigation, after the period of decades of the application remaining pending with them. The affidavit of non pendency of the application nevertheless having been filed with the request. So this requirement of non pendency of the litigation becomes tool for harassment in the hands of officials. Above all, particular dates were fixed with the particular officer who would be taking up the case on that particular day. In case the applicant happens to either not notice it or being unable to visit the TM Office, his case would not be taken up. BESIDES even if he happens to be in the TM Office, he had to come back without any work, as the concerned officer did not have the filed digitized in his computer.
As per the law, the TM Office India has to certify the IB that the particulars are same as per the Indian registration within the stipulated time. Now in this case the request for bringing on record the subsequent proprietor has to be taken out of turn, resulting in discrimination with the pending requests.
This is just one flaw which has been pointed out, there are many more like that which would result in the Indian applications being left at the back benches and the protocol applications getting priority resulting in discrimination.
NOW CONSIDER THIS FROM ANOTHER ANGLE: The person whose application is pending since long for bringing on record as subsequent proprietor, shows his intention for filing request under Protocol and pays the fee of Rs.2000/- to the TM Office, India. The office will have to dispose off his request IMMEDIATELY. After his request is allowed, he may not opt for filing the Protocol application. So in the guise of Protocol, get your request allowed just by paying Rs2000/- to the TM Office, India.
Joining Madrid protocol is going to effect the number of foreign applications positively. In time it is going to be necessary to watch the bulletines for appeals against publications. In Turkey it happened so.
ReplyDelete