Overseas Registration of Trademarks in Indian Perspective

Trademarks are a key component of any successful business marketing strategy as they allow them to identify, promote and license their goods or services in the marketplace to be able to distinguish these from associated with us their competitors, thereby cementing customer loyalty. A trademark symbolizes the promise of some quality product and in the modern global and increasingly electronic marketplace, a trademark is truly the only way for customers to identify a company’s products and services. Trademark protection hinders moves to “free ride” on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. Loss, dilution or infringement of a high-value trademark could prove devastating to a business.

World Intellectual Property Organisation (WIPO) is a specialised agency of the United nations (UN) which oversees the career of international registration of trademarks through Madrid Process.

Although it is extremely hard to obtain an ‘international trademark’, whereby a single trademark registration will automatically apply around the world, the Madrid system permits the filing, registration and maintenance of trade mark rights in more than a single jurisdiction on a global basis.

Background-

The Madrid is actually administered by the International Bureau worldwide Intellectual Property Organisation in Geneva, Exercise. The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks, which was concluded in 1891 and entered into force in 1892, and the Protocol Relating to the Madrid Agreement, which came into operation on 1 April 1996. The Madrid Agreement and Madrid Protocol were adopted at diplomatic conferences held in Madrid, Spain.

Recent Developments-

There are many significant recent developments trademarks Law Vis a Vis Madrid system. The accession of United States and European Union to Madrid Protocol on 2nd November 2003 and 1st October 2004 respectively is considered as essential development.

A record 36,471 international trademarks applications were received in 2006 by wipo under Madrid procedure. This represents 8.6% increase on figures for 2005.

No. Of developing countries witnessed significant growth in international trademarks filing in 2006.China is the most common designation for international protection because of the company’s ever growing economy and trade potential customers.

WIPO also promotes use of electronic communication for processing of international software applications. In April 2006, WIPO introduced a new Online trademark renewal procedure in India international trademarks renewal service enabling users to maintain their trademarks rights quickly and efficiently, about 22% renewals recorded electronically.

A number of latest improvements, including new search facilities, were also introduced to the ROMARIN database that contains information regarding all international marks that are currently in force in the international trademark register. As from January 1, 2007, the ROMARIN data base is fashioned available, free-of-charge, over a WIPO web site.

Indian Perspective-

India is also considering and is in fact inclined towards granting accession to the Madrid system. India is beginning to attain the various advantages of acceding to the Madrid System, most importantly that, the applicant for an International registration is forced to file only one application, pay one fee in local currency, and is not required at least initially, to submit foreign powers of legal professional. Renewals, assignment recorders, changes of name and/or address of a worldwide registration may have filing one document with the International Bureau. Moreover, the payment of any filing fee and preparation of merely one application should make savings in legal service fees.

India has stated that it would join the Madrid System after making due preparations, including modernisation of its trademark offices. Investment and action in this direction should be expedited and Indian providers of products or services enabled to spending more than system without further delay. It needs to be noted how the Madrid System doesn’t prevent trademark owners from routing their application through the IP offices of member-countries other than their own. If India does not accede to your machine early, Indian businesses may be made to put in their international applications with all the IP offices of third countries by setting up minimal operations prescribed for this reason.