New Face of Indian Trademark's Act

New Face of Indian Trademark’s Act


Madrid Protocol- India Soon To Be A Member

India has indicated that it intends to join the Madrid System for the international registration of trade marks. The Union Cabinet gave its much awaited approval for India’s accession to the Madrid Protocol in February 8, 2007. The Trade Marks (Amendment) Bill, 2007 was introduced in the Lok Sabha on August 23, 2007. The Parliamentary Committee is inviting suggestions and queries from public as well as lawyers. It is most likely that India will be a member of Madrid Protocol soon. Once India is a member of the Madrid Protocol, trade mark applicants will be able to obtain registered trade mark protection in India easily and possibly quicker than at present. The Madrid Protocol allows applicants to obtain trade mark registrations in a number of countries more cost-effectively than if separate applications were filed nationally, as a single 'international registration' is filed which designates countries of interest.

Indian Intellectual Property Office- Electronic Filing

The Indian Intellectual Property Office (IPO) has commenced e-filings of patent and trade mark applications. To operate the e-filing system, the agent/attorney is required to have a digital signature. A single digital signature works for e-filing of both patent and trade mark applications i.e. separate signatures are not required. For foreign applicants desirous of obtaining the digital signature, an endorsement and clearance from applicant’s embassy in India is required. There is no provision for filing for amendments and assignments at the moment and apart from filing the application electronically, the applicants/agents are required to file the application manually as well. However in case of trade mark electronic filing, no manual filing is required and the electronic filing will suffice.

Trans Border Reputation- Recognised By Indian Courts

In a reaffirmation of the trans-border reputation principle, the Bombay High Court single judge has injuncted a company from using the words “Pizza Hut” as part of its corporate name holding that use of the same was likely to cause confusion and deception. The court relied upon the decision in Aktiebolaget Volvo v. Volvo Steels Ltd. of the Bombay High Court Division Bench which held that transborder reputation is recognized by Indian Courts and that actual sales in India are not necessary to establish goodwill and reputation in India.
Trans border reputation of a trademark is considered not only with respect to goods that are being sold under the mark in India but also with respect to the cognate goods. A case on the point is V&S Vin Spirit V. Kelly Valley Mineral Water Co.2005 (30) PTC 47 (Del).

Further in the case of Milmet Oftho Industries & ors v. Allergan Inc., the Apex Court of India i.e. Supreme Court relied on the doctrine of trans-border reputation, thereby protecting a mark that was adopted and used in the international market prior to the adoption and use of an identical mark in India, even though the foreign mark was never used in India.

CONCLUDING REMARKS
The abovementioned changes in the Indian Trademark’s Act are evident of the fact that the Trademark’s Act is undergoing a Change to reach the global standards.
The Accession to Madrid system provides a centrally administered system of obtaining a bundle of single jurisdiction trademark registrations based on an 'international registration', and therefore provides a mechanism for obtaining trademark protection in many countries around the world. Further, allowing e-filing will help in saving time and cost and will make the process of registration of trademarks faster and smoother.