This article has been written by Mr. Atul Chaudhary, a 3rd Year Student of M.S. Law College, Mumbai.

Abstract

With the growing exports and market expansion of Indian Business the importance of trademark registration on a global scale increases significantly. The Madrid protocol aims to ease the registration process of trademark and its objective is somewhat similar to patent Law Treaty. The Madrid system of International Registration for Tarde-marks provides a convenient and one-stop solution to enterprises for registering their trade-marks and protecting their brands in multiple countries. India has always been reluctant of its obligations in the international arena. The accession to the Madrid Protocol for international registration of marks in 2013 has been a significant step by India towards global protection of marks. This will strengthen Medium Enterprises (SMEs) and other stakeholders on global branding and international trademark protection under the Madrid System. The Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and Industry, has also worked relentlessly in creating awareness amongst various stakeholders, including the Micro, Small & Medium Enterprises (MSMEs) Sector, on the importance of Intellectual Property Rights (IPR) and integrating it in business to make them globally competitive. This is in line with the objectives of the Indian National IPR Policy, 2016 to stimulate generation of IPRs and increase awareness of international mechanism and treaties, and thereby encourage creation and protection of IPRs by Indian individuals and entities in global markets. The dedicated efforts of EUIPO and CGPDTM in formulating this detailed booklet will foster sustained growth of IPRs amongst enterprises, especially SMEs, on the global stage. I take this opportunity to commend all concerned with this effort and reiterate the government of India’s commitment to a balanced and robust IP regime.

Introduction

Intellectual property rights are gaining greater attention and recognition worldwide as many countries attempt to mark their presence globally.

Under the WIPO-administered Madrid system, a trademark owner may protect a mark in up to 88 countries plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant. 

If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office. Thereafter, the international registration can be maintained and renewed through a single procedure. Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

Trademarks are a key component of any successful business marketing strategy as they allow companies to identify, promote and license their goods or services in the marketplace and to distinguish them from those of their competitors, and cement customer loyalty. A trademark symbolizes the promise of a quality product and in today’s global and increasingly electronic marketplace, a trademark is often 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.

The benefit of this Madrid protocol is it strengthen the the brand image and gives the edge in the competitive market. Branding aims at building a distinctive and attractive presence in the market that helps gain and retain loyal customers.  Effective branding involves creating an image in the consumers’ minds about the quality of a product or a service, mainly through advertising campaigns centred on the brand.  It also requires ensuring the legal protection of the brand against competitors in the relevant markets.  Branding strategies are at the core of sustained market competitiveness and business success.

MADRID UNION MEMBERS

The Madrid Union currently has 100 members, including both States and intergovernmental organisations covering the territories of 116 countries.  They represent more than 80% of world trade flows and constitute very attractive markets for Indian exports. Most of India’s top trading partners are members of the Madrid Union.  The 15 major export countries, having accounted for 60% of Indian exports in 2016, include ten members of the Madrid Union, United States of America, China, United Kingdom, Singapore, Germany, Vietnam, Belgium, France, Netherlands and Turkey.  Other members of the Madrid Union that also account for significant values of Indian exports include Italy, Japan, Republic of Korea, Mexico, Spain, Thailand, Indonesia, Israel, Australia and Iran.

USER-FRIENDLY PROCEDURES

The Madrid Protocol is administered by the World Intellectual Property Organization (WIPO), which is a specialized agency of the United Nations, headquartered in Geneva, Switzerland.  The Protocol allows you to obtain and maintain protection for your brand around the world by providing a user friendly, expeditious and cost-effective set of procedures for the central filing of trade mark applications and the central management of trade mark registrations with effects in various countries.

Advantages of Madrid Protocol

The major advantage of this protocol is it reduces the cost and provides effective branding and commercialization. Centralized filing of your trade mark under the Madrid Protocol offers many advantages:  you do not need to file separate applications in many countries, drafted in different languages, pay fees in different currencies, hire the services of local representatives and follow different procedures in each of those countries. Instead, you can file a single international application online on the IP India website. Cost savings that result from using the Madrid system are particularly significant for small and medium-sized companies (SMEs).  80% of users of the Madrid system have been categorized as SMEs, having a small portfolio of only one or two international registrations.

But the advantages of the Madrid Protocol not only consist of reduced costs and speedier procedures resulting from central filing and central management of international registrations. The Protocol also offers you early brand presence abroad, as it is a means to acquire rapid international reputation and generate goodwill for your trademarks. Moreover, from a strategic development viewpoint, the Madrid Protocol offers additional economic benefits to companies that use the system.

In principle, any sign capable of distinguishing your goods or services from those of other undertakings in the market can constitute a trade mark.  Thus, your trade mark may be constituted by a sign, a symbol, a design, a word, a colour, or a combination thereof.  However, when choosing your trade mark, there are certain requirements or limitations that you need to consider: Your mark must be distinctive, meaning that it should consist of a sign that serves to identify your products or services and distinguish them from those of other undertakings. Your mark should not be descriptive of the specific goods or services that you wish to commercialize.  Generic terms used to identify those goods or services, or terms that describe their characteristics, would not be accepted.

Most countries would refuse protection as a trade mark for signs that are contrary to public order or morality. State flags, State emblems and names and emblems of intergovernmental organizations are excluded from protection as trade marks in most countries around the world.

Case Laws

Yahoo!, Inc. v. Akash Arora & Anr

The first landmark judgment on cybersquatting. The Delhi High Court, for the first time ever in India, held that a domain name serves the same function as trademark and is entitled to equal protection. The defendant had a domain name ‘Yahoo India!’ which was identical and phonetically similar to the plaintiff’s trademark ‘Yahoo!’. The court held that internet users would be confused and deceived into believing that both the domain names have the same source. The defendant took a defense that it had put a disclaimer on its website. However, it was observed that a mere disclaimer was not sufficient because the nature of the internet is such that use of a similar domain name cannot be rectified by a disclaimer and it does not matter that ‘yahoo’ is a dictionary word. The name possesses acquired distinctiveness and uniqueness and was largely associated with the plaintiff.

DM Entertainment v. Baby Gift House and Ors.

Daler Mehendi, the famous pop star from Punjab has a large fan base and is extremely popular amongst Punjabi pop music lovers. DM Entertainment was incorporated in 1996 to manage the artist’s escalating career. The defendant company was making a large business by selling miniature dolls of the artist and cashing on his popularity. The plaintiff company was extremely aggrieved and filed for permanent injunction from infringing the artist’s right of publicity and false endorsement leading to passing off.

The plaintiff company was assigned all rights, titles and interests in the personaliy of the artist along with the trademark, Daler Mehendi. The plaintiff argued that the unauthorized or unlicensed use of the artist’s reputation with respect to goods or services will deceive the public into believing that the goods and services are associated with the singer and hence, would lead to passing off. The plaintiff further submitted that such use was done for commercial exploitation without adequate permission from the person or any other authorized by him and shall constitute infringement of the person’s right to publicity.

Character merchandising is an area of law that is still unexplored in India. This was the first case that dealt with the issue of celebrity merchandising where the publicity rights of the artist was given due recognition.

Milmet Oftho Industries & Ors. V. Allergan Inc.

The Supreme Court granted trademark protection to a well-known foreign brand. The court restrained an Indian company from using the mark OCUFLOX. The judgment was given irrespective of the fact that the mark was neither used nor registered in India. The court held that the respondent was the first to enter the market and adopt the mark. It does not matter that the respondent has not used the mark in India if they are the first to enter the world market

The Coca Cola Company v. Bisleri International Pvt. Ltd.

The defendant, Bisleri by a master agreement, had sold and assigned the trademark MAAZA including formulation rights, know-how, intellectual property rights and goodwill for India with respect to a mango fruit drink known as MAAZA to Coca Cola.

In 2008, the defendant company filed for registration of the mark MAAZA in Turkey and started exporting fruit drink under the name MAAZA. The plaintiff, Coca Cola claimed permanent injunction and damages for infringement of trademark and passing off.

Cadila Health Care v. Cadila Pharmaceutical Ltd.

The Supreme Court held that it is insignificant whether the plaintiff and the defendant trade in the same field or in the same or similar products. The court laid down certain criteria to determine passing off of an unregistered trademark:

• The nature of the marks (word, label or composite);
• The degree of resemblance between the marks;/
• The nature of goods for which the marks are used;
• Similarities in the nature, character and performance of goods of rival traders;
• The class of purchasers who are likely to buy goods bearing the marks;
• The method of purchasing the goods or placing orders; and
• Other circumstances that may be relevant.

Conclusion

The Madrid Protocol offers you an attractive route, to protect your brand in up to 115 countries around the world, by making available cost-effective and user-friendly procedures to acquire and manage your trade mark rights abroad. As a national of India, or a person domiciled or having an enterprise in India, you are entitled to use this treaty that India joined in 2013.  Using the Madrid Protocol today, is an essential component of any successful branding strategy.  The Protocol offers you early brand presence at a global level and helps you rapidly acquire international reputation and generate goodwill for your trademarks abroad. The Protocol ensures the legal protection of your brand against competitors in export markets, increases franchising opportunities, opens partnership possibilities and facilitates integration to global supply chains.  In general, it provides a most effective support to your branding strategies and business success.

References 

This article was originally on ipindia.gov.in. The link for the same is herein

extension://efaidnbmnnnibpcajpcglclefindmkaj/https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_93_1_THE_MADRID_PROTOCOL.pdf

This article was originally written by Biswajit Sarkar The link for the same is herein

 https://www.hg.org/legal-articles/top-5-interesting-trademark-cases-in-india-51057