Paper Details
Paper Code: RP07V12023
Category: Research Papers
Date of Publication: December 06, 2023
Citation: Ms. Sainikitha Ol & Ms. M Sai Parthana, “A Comparative Analysis of the Applicability of the Madrid Protocol - with Reference to India and the United States of America”, 1, AIJIPCA, (2023).
Author Details: Ms. Sainikitha Ol & Ms. M Sai Parthana, Student, School of Excellence in Law, Ambedkar Law University
ABSTRACT
In the contemporary business world, the term ‘diplomacy’ instantly connotes itself ‘International Trade Diplomacy’. No trade is feasible without having a defined set of standards that yield powerful results. Intellectual Property is a recognized sub-set of Business Law. Therefore, the protection of these distinguished intangible creations of the human mind calls for immediate protection in the era of the alarming increase of unscrupulous activities.
This Article provides a Comparative Analysis of the Indian Trademark Act and the US Lanham Act, focusing on their implications in the light of the Madrid Protocol. Both Acts offer protection to trademarks, yet they diverge in several aspects. The study examines the introduction of the Protocol in its respective domains, registration process, and enforcement mechanisms outlined in Acts, highlighting similarities and differences. This analysis also underscores the divergent approaches taken by the two legal systems and underscores the importance of aligning them with the provisions of the Madrid Protocol for seamless international trademark registration. The introduction of a new chapter, Chapter IVA, in the Indian Trademark(Amendment) Bill, 2007reveals a deliberate effort to extend trademark protection beyond India’s borders. The United States embraced the Madrid Protocol on November 2, 2003, marking an epochal shift in U.S. trademark law.
KEYWORDS
Indian Trademark Act; 1999 ; Lanham Act; 1946; Madrid Protocol; International Registration; Intellectual Property Law
Introduction
The dynamic trademark protection landscape in India is intricately linked to global accords and the nation's increasing focus on intellectual property rights. Even if there has been progress, there are still issues, such as application processing delays. It is obvious that a simplified, effective system that supports trademark protection and conforms to international standards is required. To understand the issues in the legal framework in India on Intellectual Property, a comparative analysis with such framework of United States has been made in this article.
The major objective of this article is to highlight the synergies and the differences between the IP frameworks of both the nations to figure out the possible changes required in the Indian framework for smooth regulation of the IP industry.
The Indian Perspective
The Trade Mark (Amendment) Bill, 2007
The Trade Mark (Amendment) Bill was proposed by the legislative bodies of India in the year 2007. This Bill introduced a new chapter, Chapter IVA, to amend the laws pertaining to Trade Mark to protect them in other countries.[1] The aforementioned Bill was referred to the Standing Committee on Commerce, headed by the chairman, Dr. Murli Manohar Joshi, on October 1, 2007.
This Bill introduced the following major amendments:[2]
1. A period of 18 months has been prescribed to register the trademarks.
2. The Registrar of Trade Marks is the Controller-General of Patents, Designs, and Trade Marks. The Registrar is appointed by the Central Government along with any other officers deemed fit. The Bill authorizes the Registrar to examine international applications originating from India in addition to those received from the International Bureau and to maintain a record of international registrations.
3. In such a case, the registered proprietor, also known as the applicant, may make an international application on a prescribed form. If the person possesses an international registration, he may make an international application in the prescribed form for such registration to any other contracting party.
4. The Bill also aims to reduce the time period for filing of notice of opposition to applications to a time period of three months.
5. The Bill simplifies the provision related to the transfer of ownership of trademarks by assignment or transmission.
Enabling India’s accession to the Madrid Protocol:
India ratified the Madrid Protocol on July 8, 2013. As the Madrid Protocol System allows its applicants to file a single international application, thus making it cost-effective, the Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules, 2013 were enacted to enable India to accede to the Madrid Protocol for the International Registration of Marks at WIPO. This brings the total number of members to 90.
Glancing at the number of applications from a perfunctory perspective, trademark applications until 2009 provided the total number of applications filed to 1.9 million.[3]From 2009 to 2020, the number of applications reached 4.75 million.[4]
This amendment brought serious changes to improve the functioning of the Trademark Registry. All applications received must be disposed of within a period of 12 months. However, the Protocol allowed parties to extend this timeline by up to 18 months and India exercised this option at the time of accession. Nonetheless, India’s administrative and bureaucratic capabilities at that time made processing applications in any timeline below 18 months seem impossible. For instance, under the Protocol, trademarks in India were given protection for ten years from the date of filing, but the Registry’s situation made the process of registering trademarks take more than a period of ten years.
This process has gotten faster in the years since then; however, there still exist many applications that are not disposed of within the 18 months prescribed under the Indian law and the Madrid protocol.
The National Data Sharing and Accessibility Policy, 2012 (NDSAP) requires government authorities to disclose all ‘sharable non-sensitive’ data in a machine-readable format.[5]Although it doesn’t define the term “sensitive data”, the same can be interpreted by various rules and statutes.[6]
The US Perspective
The United States initially refrained from joining the Madrid Agreement due to various concerns. Chief among them was the requirement for a basic registration in the home country before seeking international protection. This requirement clashed with the US trademark registration process which includes rigorous examination and prolonged duration. Additionally, apprehensions arose from the short timeframes provided for trademark offices to refuse registration under the Madrid Agreement. These concerns collectively discouraged US participation in the protocol.
In 2003, a significant transformation occurred when the United States acceded to the Madrid Protocol. This marked a pivotal moment in US trademark history, reshaping the landscape of international trademark protection. The Madrid Protocol was incorporated into US law, offering US trademark owners an unprecedented avenue to access international registration benefits. The effective date of this accession heralded a new era, one where US trademark owners could extend their protection globally with greater ease.
A crucial facet of the Madrid Protocol is the concept of extending trademark protection to the United States. This extension hinges on the principle of "bona fide intention to use" the mark in commerce. The protocol offers trademark owners the unique advantage of securing protection for their marks in the US without the prerequisite of prior usage in US commerce.
Trademark owners have responsibilities for the maintenance and renewal of their international registration. This involves renewing their registration by submitting requisite fees to WIPO. Furthermore, trademark owners must submit affidavits of use and pay stipulated fees within specified timeframes to ensure the on-going validity of their registrations.
The United States Patent and Trademark Office (USPTO) examines international applications originating from the US to ensure that their contents correspond with the basic application or registration. Once certified, the application is transmitted to the World Intellectual Property Organization (WIPO), which reviews the filing requirements and fee payments.
When a trademark owner uses the Madrid Protocol to extend protection to the United States, the Lanham Act's[7] provisions come into play. The US Patent and Trademark Office (USPTO) examines the extension request to ensure it meets the requirements of the Lanham Act, including aspects like genuine intention to use the mark in commerce.
Comparative Analysis
The Indian Trademark Act, of 1999 and the US Lanham Act, of 1946 have taken steps to align with the Madrid Protocol’s framework for international trademark protection. This part provides a detailed comparison between the Indian Trademark Act and the US Lanham Act, particularly in the context of how they relate to the Madrid Protocol.
1. Process of Registration:
In India, the process begins with the submission of a trademark application. The registry conducts a preliminary examination to check if the application meets the formal requirements. Then the mark is published in the journal and remains open for public scrutiny for four months. During this period, any party can file objections against the mark. If objections are raised, the Registry serves a notice to the applicant to respond within three months. The applicant has two months to provide a counterstatement. The registry serves the counterstatement to the opposing party within two months. The opposing party has two months to submit a response with evidence. There may be a series of responses and counter-responses, including “evidence in reply by the party” and “further evidence”. Both the parties are granted an additional month for each step. If both parties take the maximum time at each step, the entire process can exceed 15 months, which is longer than the prescribed 12-month period. Additionally, the Registrar has the option to grant further time beyond the rules.
In the US, the Lanham Act, specifically Title Xll, adds provisions that align with the Madrid Protocol. The act requires that international applications based on a US trademark application be filed by a US national or entity with a real commercial establishment in the US. Objections shall be raised against a Mark within a period of one month. The USPTO examines the international application to clarify its correspondence with the basic application or registration. After certification, The USPTO transmits the application to WIPO, which reviews it for meeting filling requirements and payment of fees. If requirements are met, WIPO issues an international registration, publishes it in the WIPO Gazette, sends a certificate to the holder, and notifies designated Contracting Parties. The process in Lanham Act, 1946is streamlined, allowing for a more efficient examination and registration through the Madrid Protocol framework.
The Indian process involves multiple stages, objections, and counter-responses, leading to a potentially lengthy process. In India, the national examination by the Indian Trademark Office occurs before the application is forwarded to WIPO. In the US, the USPTO examination occurs after WIPO's certification.
2. Effect of Non-Use:
In India, the concept of ‘use’ is given a broader interpretation. Mere advertisement of goods and services can be considered as a sufficient use, even if there are no real sales. India’s broader interpretation allows for a wide range of activities to demonstrate use, including advertising. In India, the non-use period is calculated from the date on which the trademark is entered into the register. If the trademark has not been in bona fide use for five years from that date, an application for removal can be filed.
In the case of Express Bottlers Services Pvt Ltd v. Pepsi Inc,[8] the Court acknowledged that sales to a limited or restricted market can be considered “use” under certain circumstances and also suggested that the interpretation of terms like “us”, “public”,” goodwill” and “market” should consider the prevailing international trade and import policy of the country. In J N Nicholas Ltd v Rose and Thistle,[9] Indian Courts interpreted the concept of “use” in a trademark context. The Court ruled that “use” doesn’t strictly require actual physical sales, it shall encompass activities like advertisement, even in cases where the goods themselves may not yet exist.
Section 2(1) of the Indian Trademark Act, 1999 clearly defines a “registered trademark” as a trademark actually on the register and remaining in force. In the case of M J Exports Pvt Ltd Bombay v Sunkist Growers,[10] it was established that under Sections 46(1) and 46(3) of the Indian Trademarks Act, registered proprietors of a trademark were afforded protection when non-use of the trademark was attributed to specific circumstances such as the import policy, import control, and tariff duty set by the Indian government. India’s interpretation may lead to a broader range of marks being maintained in registration, even if they are not used in a typical commercial sense.
In the US, the Lanham Act’s interpretation of “use” is stricter. Courts have ruled that a mere token of use is not sufficient; there needs to be genuine commercial use to maintain the trademark’s registration. The US’s stricter interpretation allows for a wide range of activities to demonstrate use, including advertising. Article 9 of the Inter-American Convention of 1929 is in force in the US. It states that when a trademark application is rejected due to a prior registration, such prior registration may be canceled if the mark has been “abandoned”. In the US, the three-year period of non-use which serves as prima facie evidence of abandonment does not begin until the USPTO registration has been issued.[11] In the US, Section 45 of the Lanham Act, 1946 provides that a mark shall be deemed to be abandoned when its use has been discontinued with intent not to resume such use. Lanham Act, 1946 does not recognize token use of trademark. Its stricter stance aims to ensure that trademarks on the register reflect actual commercial activity, reducing clutter and promoting fair competition.
Liechtenstein-based distilled spirits company, Lodestar received protection of its trademarks in the year 2011 for its sale of products namely, whiskey, rum, and other distilled spirits. It filed its trademark infringement claims against Bacardi for its use of the ‘Bacardi Untameable’ mark in its advertising campaign for rum in the year 2013. The Madrid Protocol protects the owners of trademarks in the US without first requiring the use of the mark in the US domain, under which Lodestar claimed its rights over the ‘Untamed’ mark. Thus, the question of which entity has prior trademark rights arose. To answer the same, the Ninth Circuit analysed whether the former, Lodestar’s use of its trade dealings was ‘bona fide’ in nature. When this question was answered affirmatively, the Court decided the case in favour of Lodestar as even though Lodestar had not used its mark in the US domain first, being the senior user, it reserved itself a right of priority based on its application under the Madrid Protocol and its prior use of the ‘Untamed’ mark in its home country. [12]
3. Extension of protection:
The Madrid Protocol allows international trademark registrations to be extended to India. Similar to regional registrations, renewal occurs every 10 years. Reminders are sent six months before renewal. Changes in the holder’s information or goods/services can be easily done, affecting multiple contracting parties with a single step and fee. The Madrid protocol doesn’t harmonize trademark laws. Each country, including India, applies its national law to extension requests. Filing an extension request appropriately is seen as a constructive use of the mark from the registration date or priority date. This means that the actual commercial use before obtaining an extension certificate is not mandatory in India.
Renewal and changes in the US are governed by specific procedures, including the submission of affidavits of use and appropriate fees at different intervals. The Lanham Act, 1946provides provisions for renewal and changes in section 9. It states that registrations can be renewed in increments of 10 years. Under section 66(a) of the Lanham Act, requests for extension of protection to the US are addressed. It mandates that the request must include a declaration of bona fide intention to use the mark in commerce. Section 71 of the Lanham Act, 1946 outlines maintenance requirements for US registrations. If Section 71 - Declaration of Use - satisfies all legal requirements, then the USPTO would accept and the extension of protection in the United States will be maintained. Affirmative actions include filing an affidavit of use and paying appropriate fees. The protocol doesn’t harmonize laws, and each country applies its national law to evaluate extension requests.
Conclusion and Suggestions
The point that needs immediate focus is the reduction of the timeline of filing of opposition gradually, from a period of four months to three months, and with time, 90 days. The delay caused by the rules and procedures of the Registry increases the time taken to process an application. Although the Trademark Registry’s official portal provides access to updated data, it does not provide a bulk data set to the general public for analysis. There exist more than 4.75 million records and each record can only be accessed after solving a complicated captcha. The Registry’s limited operational capacity and staff have restricted it from fully implementing the Madrid Protocol.
In conclusion, the scope for Intellectual Property in India is now higher than ever, making it an emerging sector. As a result, protecting these intangible creations is of utmost importance. Thus, aiming to eliminate the hurdles faced by the owner of trademarks in their efforts to protect their creations must be made the first priority of the Trademark Registry.
[1] The Trademarks (Amendment) Bill 2009 - Implementing the Madrid Protocol, Rajya Sabha passes the Trademark Amendment Bill, 2009 after a spirited debate, SPICYIP, available at: <https://spicyip.com/2010/08/ rajya-sabha-passes-trademark-amendment.html> accessed 19 August 2023.
[2] Department related Parliamentary Standing Committee on Commerce, Eighty fourth Report on Trade Marks (Amendment) Bill, 2007.
[3] Custom Dataset.
[4] Ibid.
[5] Objective Clause, National Data Sharing and Accessibility Policy (2012), available at: <http://geoportal. mp.gov.in/geoportal/Content/Policies/NDSAP_2012.pd>, accessed 19 August 2023.
[6] Clause 2.10, Objective Clause, National Data Sharing and Accessibility Policy (2012), available at: <http:// geoporal.mp.gov.in/geoportal/Content/Policies/NDSAP_2012.pdf>, accessed 19 August 2023.
[7] Federal Trademark Act of 1946, as amended (the “Lanham Act”), 15 U.S.C. §§ 1051 et seq. The amendments appear in §§ 60 et seq., 15 U.S.C. § 1141 note.
[8] Express Bottlers Services Pvt Ltd v Pepsi Inc [1989] PTC 14 (Cal).
[9]J N Nicholas Ltd v Rose and Thistle [1993] (II) CHN 395 (Cal) (DB).
[10] M J Exports Pvt Ltd Bombay v Sunkist Growers, Los Angeles [1991] PTC 81 (Reg) (Cal).
[11] Kera David J & Davis Theodore H, Jr [2004] (1) 190.
[12] Lodestar Anstalt v. Bacardi & Company Limited No. 19-55864 D.C. No. 2:16-cv-06411-CAS-FFM.