Indian trademark system has always been dynamic and responsive to the changing international scenario. Likewise since its establishment in the year 1940, the Indian Trademark Registry is always in the process of equipping itself to meet the requirements of international standards, practice and procedure. Latest among these is the implementation of Madrid system of international registration of marks.
India joined the Madrid system which came into force on July 8, 2013. The implementation of Madrid System is just another milestone in India's endeavor to globalize its intellectual property regime, the business and its economy. In order to equip the existing system to adapt to the international system under the Madrid Regime, the Indian Trademarks Registry has undergone a rigorous revamping in all sectors of practice and procedure. This reviving and restructuring process has started almost 5 years back. In order to have a robust system to support the successful implementation of Madrid Protocol and the requirements of international registration under the Madrid system, the Trademark Registry has undertaken capacity building exercise particularly with regard to IT infrastructure and human resources. These endeavors have resulted in major restructuring, reduction of backlogs, digitization and online accessibility of records, online and free public search of marks, etc.
Madrid member countries- Image from here
To start with the existing Act and Rules were amended to incorporate the relevant provisions related to the international Registration of marks. The existing Classification of Goods and Services, which had only 42 classes, were amended to include all 45 classes under the Nice classification to make it consistent with the Madrid Goods and Services (MGS)
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The Indian Registry was facing a huge backlog of work at the prosecution, opposition and post registration level. Subsequent to the direction of the Delhi High Court, in the year 2010 the Trademarks Registry published a list of registered matters wherein the records were missing and gave a chance to the right holders to reconstruct the same. This helped in keeping the records in order. Subsequently, the Registry has undertaken a number of special drives to clear the backlog. Among them are Special drive to restore removed matters from the Register of Trademarks; Special drive for correction of errors in the Registration Certificate; Special drive to dispose off opposition matters wherein settlement was arrived at; Special drive to clear the backlog of post-registration matters by listing the matters such as assignments, name change, address change, mergers for hearing; Special drive of Pending Applications Record management(PARM); Special drive to dispose off pending examined matters by fixing hearing, to mention a few.
The whole system of trademark registry is in the process of digitisation and in furtherance of that various steps were taken by the Registry such as- Strenthening the online filing of applications by introducing the comprehensive online filing system; Complete records of each applications/registrations were made vailable to the public through the E-Register; Publication of Examination Reports through the E-Register and also allowing the right holders to send responses to the Examination Report through email (parm.tmr@nic.in);Publishing monthly hearing lists for applications/oppositions/post registration matters to make it easy for the right holders; Recently introduced a special section in the website for hearing and adjpournment details of the matters to inform the right holders on time;Publishing the Trademarks Journal weekly on the website; introduced an online tool to enable the trademarks owners/agents to correct any clerical/typographical errors in the data entryat the Trademarks office.
The entire process of clearing the backlog and digitisation creates more transparency and accuracy of Trademark procurement. This will help the Indian system easily adapt to the International Standards and thereby making India's accession to the Madrid system a grand success. However, Indian system still needs to be improved on the substantive aspects of the registration and one such area is the quality of Examination of Applications. The Registry generally issues objection on the Absolute (Section 9) and/or Relative (Section 11) grounds of Refusal other than the procedural objections if any. A study on a number of such reports revealed that the objections were raised in general and not specific to the subject mark in hand. For instance if the objection is on Section 9 (1) (b) which says- a trademark which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services; the report will general mention the whole section instead of specifying whether the objection is on the quality or quantity or intended purpose etc. Likewise in Section 11 objection without clearly analysing the search report, all the marks which are not even identical/similar/deceptively similar to the mark in hand will be enclosed along with the Examination Report. Improving the quality of Examination and Hearing is the need of the day and only that can make the system reach upto the international level.
Over the years Indian economy has undergone a rapid transformation and IP assets have grown in importance and value, rapidly outpacing tangible assets. Trademarks and brands are of high importance in this rapidly growing economy and to keep up with developments in the international and national business and trade, it is important for the industry, government agencies and the judiciary to work together closely and continue to develop mechanisms to protect the rights and to enable India to improve and expand its Trademarks regime.
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