This article has been written by Prathna Vohra, pursuing the Diploma in US Intellectual Property and Paralegal from LawSikho
Table of Contents
Introduction
Many times we come across new brands for services and goods trying to look for a design or logo or even unique names. It may be food brands, new hospitals, ice cream parlours or shoe brands, all needing an eye-catching name, sign, symbol, or pattern. Such unique names, signs or combinations of patterns are classified as ‘Trademarks.’ Trademarks help identify a particular brand. For example, just by looking at it, we recognise the name of the brand if it is domestic or global. Such trademarks are also protected by different legislations so that no other party may make use of them. When we register the trademark in India while expanding the business Internationally and moving such trademark applications to those countries, it will help give the business global recognition. About 94 countries in the world protect global trademarks.
Noting down various benefits of registering a global trademark in India
When you register a trademark in each nation where you want to sell your products, you give the company the exclusive right to use that trademark in that country.
- This not only aids in the establishment of a basis for combating counterfeiters but also assures that the corporation retains exclusive rights to one of its most significant corporate assets.
- Registering a trademark globally also gives you the option of licencing it to others, allowing you to profit from the popularity of your products and brand. Brand owners should consider this a big value compared to the minor expense of registering their important trademarks.
We shall further gain insight into the procedure for registration of such global trademarks in India and exceptions to such registration.
Trademark history in India
In India, the Trademarks Registry was founded in 1940, and it now manages the Trademarks Act, 1999 and its guidelines. It serves as a reference and information Centre, as well as a facilitator in trademark disputes in the country. It aims to register trademarks that are applied for in the nation, improve trademark protection for products and services, and prohibit fraudulent use of the mark. The Registry’s primary duty is to register trademarks that meet the requirements of the Act and Rules.
Section 2(ZB) of the Trademark Act 1999 defines TradeMark. A trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and a combination of colours.
Trademarks are an important part of any successful company marketing plan because they allow firms to identify, advertise, and license their products and/ or services in the marketplace while also distinguishing them from those of rivals. A trademark is frequently the sole method for buyers to recognize a company’s products and services in today’s global and increasingly computerized economy. Trademark protection prevents attempts to “free ride” on a company’s goodwill by marketing inferior or comparable items or services using similar distinguishing marks. A high-value trademark might be lost, diluted, or infringed upon, which could be disastrous.
Trademark rights, like other intellectual property rights, are regarded differently in each nation or jurisdiction where they are obtained. Each country/jurisdiction has the authority to recognize and defend trademark rights in ways that are consistent with its policy objectives. Although the phrase “international trademark rights” refers to a collection of trademark rights that apply to several countries/jurisdictions, the existence and enforcement of these rights are distinct to each country/jurisdiction and are not interconnected in most cases.
A majority of nations and jurisdictions have agreed on similar methods or protocols for submitting trademark applications, notwithstanding variations in recognizing and enforcing trademark rights. The Madrid Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, 1989 governs the international trademark system.
The Madrid Protocol
The Madrid Protocol is a mechanism for international trademark registration. It allows you to obtain trademark protection in a large number of jurisdictions at the same time. The Madrid Agreement and the Madrid Protocol are two different international accords that regulate the system of trademarks. Under the Agreement, nationals of any signatory can defend their trademarks, which are registered in their home country, in all other signatory countries. Nationals of any signatory can get protection in countries and jurisdictions that are contracting parties to the Protocol if they have a pending application or registration in the country or jurisdiction of an origin.
The World Intellectual Property Organization‘s International Bureau is in charge of both the Agreement and the Protocol (WIPO). In all nations and jurisdictions that are only parties to the Protocol, international registrations are controlled only by the Protocol. India became a member of the International Trademark System in 2013.
The fees and payment of the Madrid Protocol
The Madrid System is a simple and cost-effective way to register and manage trademarks all around the world. To apply for protection in up to 124 countries, submit a single application and pay a single set of costs. Using a single centralized system, you may modify, renew, or grow your worldwide trademark portfolio.
The cost of an international trademark registration comprises the basic charge (653 Swiss francs for a mark in colour*; or 903 Swiss francs for a mark in colour*), as well as extra expenses based on where you wish to protect your mark and how many classes of products and services it will cover.
For example, the total cost of registering a trademark in India and the European Union on February 16, 2018, for one class of products, will be 1’698 Swiss francs [653 basic fees + 148 (one class in India) + 897 (one class in the European Union)]. After obtaining an international trademark registration, the additional fee is applied to expand the geographical scope of coverage, modify or renew your trademark portfolio.
Requirements for obtaining registration of the international trademark
- Applicants should be Indian citizens, Indian domiciled or have an effective place of business in India.
- The applicant must have an application for a national (Indian) trademark or a trademark registration with the Indian Trade Marks Registry. The international application will be based on this national trademark application/registration. The international application will use the same trademark as the national trademark application or registration; the international application’s list of products and services should also be like the national mark’s list.
- In the international application, the applicant must select one or more other Madrid Protocol member nations in which he wants to protect his trademark.
Procedure for acquiring trademark
The trademark applicant must file an international trademark registration application under the Madrid Protocol through the applicant’s trademark office which is also known as the office of origin. The office of origin for Indian businesses is in the Office of Registrar of Trademarks, India. The trademark application will be processed by the origin office and filed with the Intellectual Property Organization in Geneva.
If the trademark application is approved, the mark is entered into the International Register and published in the Gazette of International Marks of the World Intellectual Property Organization (WIPO). The International Bureau subsequently issues a certificate of the international registration and notifies each of the Madrid Protocol countries for which the trademark applicant has sought protection. Each country’s trademark office has the power to deny the mark’s protection by informing the International Bureau within the Madrid Protocol’s time restrictions. The Madrid Protocol establishes stringent time limitations of 12 or 18 months for authorized offices to file objections.
Any opposition to the trademark’s registration must be submitted to the International Bureau in the required way. If no nation refuses to register the mark, the mark’s protection in each country is the same as if it had been registered by that country’s office. An international trademark is registered for ten years after it is registered under the Madrid Protocol. International trademark registrations can be renewed directly through WIPO or the concerned office of origin after ten years.
Exceptions to trademarks recognition
In the marketplace, a trademark is anything that represents your brand. Trademarks are typically used to protect company or product names, logos, or slogans. Trademarks can be used to protect things like unique product packaging, colours, and sounds. Mark if generic or descriptive phrases will not be registered nor will it register anything that is confusingly like an existing mark. Different intellectual property protections are required for inventions and works of authorship.
Non-generic words, logos, slogans, colours, scents, and sounds can all be registered if you can show how they represent your company. Patents and copyrights should be used to protect inventions and works of writing that cannot become registered trademarks.
A mark cannot be registered if it contains immoral, deceitful, or scandalous material or material that disparages or falsely suggests a relationship with living or deceased individuals, institutions, beliefs, or national symbols, or brings them into disrepute.
Like every other country, India too has some legislation to trademark exceptions.
The absolute grounds for registration refusal are listed in Section 9 of the Act.
Any trademark that falls under one of the grounds specified in this section is ineligible for registration.
- Trademarks that do not have any distinguishing characteristics are absolute grounds for refusal of registration. The term “distinctive character” refers to trademarks that cannot differentiate one person’s goods or services from those of another.
- Trademarks that contain only marks or indications that are used in commerce to designate the type, quality, amount, intended purpose, values, or geographical origin of products or services delivered.
- Trademarks that only contain markings or indications that have become commonplace in today’s language or the industry’s established practices. Trademarks are of a character that deceives or confuses the public.
- Trademarks that contain or contain material that is likely to offend the religious sensibilities of any class or part of Indian citizens.
- Trademarks that include or incorporate scandalous or obscene content.
Relative grounds
Relative grounds for registration denial are outlined in Section 11 of the Act. Exceptions to the reasons for the denial are listed in this section. The trademarks under section 11 can be registered if the exceptions are followed.
- Trademarks that cause public confusion because they are identical to an earlier similar trademark for products or services.
- Trademarks can cause public confusion because they are comparable to an earlier identical trademark for products or services.
Conclusion
Trademarks are a vital part of any business brand; be it commodities or services. A small business is identified as a brand with the help of a trademark. The widespread business from local to national and international level has given rise to the concept of ‘global registration of the trademark’ which means that the trademark of country ‘A’ can be registered in countries P, Q and R as well. This does not need separate registrations as long as the member countries are part of a protocol known as the ‘Madrid protocol’ which is a single channel to register a trademark in various countries.
Such global registrations are a boon to the economy as they do not only register trademarks but also give an exclusive right to The trademark owners and protection to search trademarks. This in addition also improves the international relations between countries. It should be borne in mind that to protect the brand name you have to use your brand, monitor it and also deal with infringement immediately if any.
References
- Laxmikant V. Patel v. Chetanbhat Shah & Anr., 2001
- Godfrey Phillips India Ltd. v. Girnar Food and Beverages Pvt. Ltd
- M/S P.K. Overseas Pvt. Ltd. vs. M/S KRBL Ltd
- Ishi Khosla v. Anil Aggarwal
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