The authors, Hatim Tinwala and Ms. Mahima Choudhary are 4th-year B.Com. LL.B (Hons.) students at the Institute of Law, Nirma University. In this article, they explained the Process of Trademark Registration By a Foreign Applicant.
Due to rapid globalization and technological advancements taking place, counterfeiting of products has become easily possible and it, therefore, becomes important to avoid this and protect the original owners’ interests so that original manufacturers are not discouraged. To achieve this, it is necessary to recognize intellectual property rights in a product or service internationally and to grant protection to the owner at an international level.
Intellectual property rights do not distinguish between nationalities, as opposed to other property rights. This allows Foreign Applicants to protect their intellectual property rights by registering them in any country they want as long as they are part of a treaty or convention that allows the same to be done. The multiple ways for trademark registration in India that are at a Foreign Applicant’s disposal are that they can either go through the Indian Trademark Channel or else by applying through The Madrid Protocol.
Indian Trademark Registration Law Route
The Indian Trademark Law adheres to international standards of trademark protection and therefore, it can provide protection to foreign trademarks provided they are registered in India. Indian has recognized certain countries as Convention countries[i] which enables a person or a company hailing from the recognized convention countries to get its trademark registration done in India.
An application in the home country is to be made within six months by a person or company from a conventional country to apply for registration of a trademark in India. If such a mark is approved for registration, the foreign national shall be deemed to have recorded his or her mark in India from the same date on which he or she submitted the application in the home country. The statutory provision which enables such application to be made is provided under section 24 of the Trademark Rules, 2017 which elucidates the application process which is to be followed by Foreign Applicants from conventional countries.
Registration of a trademark through the Indian Channel renders the applicant an exclusive right to commercialize its products in India’s markets. Doing this not only provides a solid foundation for avoiding counterfeiters but also guarantees that the applicant enjoys exclusive rights over what may be one of its most valuable business assets. Registering a trademark abroad by a foreign applicant additionally provides the opportunity to license the trademark to others or maybe the basis for the applicant’s franchising or merchandising policy.
Madrid Protocol Route
The Madrid Protocol facilitates the registration of trademarks in multiple jurisdictions worldwide. India being a member of the Madrid Protocol provides the opportunity to the foreign applicants to file registration of their respective trademark in its territory through the recently added provision in the Trade Marks Act (Section 36A of the Trade Mark Act, 1999).
The Madrid Protocol provides a mechanism for obtaining trademark registration by way of one application that can cover more than one country. The opportunity to have a common registry to cover a wide range of countries offers benefits, both in terms of portfolio management and cost savings, as compared to an individual regional registration portfolio. The centralized filing of a trademark under this system offers a wide range of advantages to the Foreign Applicant like the elimination of the need to file separate application in different countries by drafting the application in different languages and paying legal fees in different currencies to hire the services of local representatives and follow different procedures that is prevalent in each of those countries.
This tedious process is eliminated if one files a single international application online on the IP India website, in a single language (English) and pays fees in a currency (Swiss francs) which is universally accepted under the Madrid Protocol which gives the trademark application an effect to be recognized in all the Madrid Union Members of one’s interest.[ii] Upon filing the application, the mark is examined by each designated member country where registration is sought and then proceeds to registration. This procedure is regarded to be quite simple, user-friendly, expeditious, and cost-effective.
In addition to that, the strict time limits imposed on the members of the Madrid Protocol to decide on the recognition of local rights based on one’s international registration becomes a contributing factor to speed up trademark protection procedures exponentially. The added benefit that comes along with registering through the Madrid Protocol is that it offers early brand presence abroad, as it becomes a means to acquire a rapid international reputation by generating goodwill for the trademark.
Status-quo of Protection of Foreign Trademarks in India
Since the globalization of world trade, companies in the modern trading landscape are no longer confined to geographical boundaries. As a consequence of globalization, the phenomenon of brand recognition has transcended the stereotypical concept of having popularity only in its place of origin and has spread in the areas where such products operate and has developed an international reputation.
Indian Law on this matter has also evolved from a traditional approach to a much holistic and accommodating approach with the passage of time. The Indian Judiciary in its initial years till around the nineties followed a much narrower approach which only provided protection to domestic companies. Nonetheless, recently in the past couple of decades, the Judiciary has started recognizing the IP rights of Foreign Nationals and Companies in accordance with the changing socio-economic conditions that have made their way from the international environment to India.
Such changing conditions have also prompted improvements to the country’s statutory law and not just its judicial interpretation. As suggested by international conventions and treaties, the Trade Marks Act of 1999 also underwent a radical change to better protect foreign marks by incorporating safeguards for well-known marks. Indian precedents from the mid-nineties onwards, such as the N.R. Dongre And Ors vs Whirlpool Corporation case, suggest that courts in India would accept even the slightest of evidence on the knowledge of the foreign mark amongst the relevant Indian consumers, in order to uphold the trans-border reputation of the foreign claimant in its marks.
The recent judgment of Delhi High Court in the case of H&M Hennes & Mauritz AB & Anr. vs. HM Megabrands Pvt Ltd & Ors affirms the position of the Indian Judiciary when it comes to the protection of Trademark of a Foreign Brand which has its goodwill and recognition in the Indian Market. Here, the Plaintiff’s mark was infringed by the defendant and hence the court restrained the defendants from using in any manner whatsoever the trademark/service mark/trade name. HM,HM, .HM MEGA BRANDS/.HM or any other deceptive variations of the same in relation to their businesses, products, etc.
Concluding Remarks on Trademark Registration
The benefits that accrue from the registration of a Trademark are many and this adds value to a person’s product or service. Registration protects a person’s a product/service by increasing its credibility as a registered trademark depicts a sense of authenticity and even assists in ensuring growth. Thus, getting a trademark registered in India by a foreign applicant either under Indian Trademark or under Madrid protocol will help an individual or a company significantly as cross-border trade is continuously on the rise, and registration in multiple countries provided several benefits to the owner of the mark.
The Madrid protocol especially provides foreign applicants with a cost-efficient and expeditious system for protecting their marks on an international level and this helps in the sustainable growth of the brand.
[i] Section 2(f) of the Trademark Rules, 2017: “convention country” means a country or group of countries or union of countries or Inter-Governmental organizations of countries declared as such under sub-section (1) of section 154.
[ii] THE MADRID PROTOCOL: A ROUTE TO GLOBAL BRANDING, IP India (January 2018), http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_93_1_THE_MADRID_PROTOCOL.pdf