Photo: Pradeep Gaur/Mint
Photo: Pradeep Gaur/Mint

Registering trademarks turns cheaper for firms

New system works on a single registration fee to be paid in India, is likely to help firms save more money

Mumbai: India’s patents and trademarks office has issued guidelines on the working of the Madrid Protocol, the treaty that India signed last year allowing Indian companies and citizens to register their trademarks globally.

The new system, which works on a single registration fee to be paid in India, will help firms and brand owners save on the otherwise huge expenditure incurred in filing separate international trademark applications for all the individual countries.

The guidelines have been largely accepted by the stakeholders, including brand owners and law firms that handle trademark matters.

But some experts say it may have a revenue impact on trademark agents and law firms as the filing of Indian applications by foreign firms will see a significant drop.

“We do not see any issue as such in the working of Madrid agreement," said Essenese Obhan, founding partner at Obhan and Associates, a Delhi-based law firm that specializes in intellectual property, including patents and trademarks.

“Though it is a fact the international filings in India will go down thereby affecting the filing of cases, it will open up more opposition cases as trademark filings from foreign countries in India through the Madrid agreement will be more now," added Obhan.

Under the new system, a local company that wants to register its trademark in multiple countries can file a single international application at the Indian trademark office in Mumbai and at zonal offices in Kolkata, Delhi and Chennai. Following this, the Indian office, after verification and certification, will forward the application to the trademark cell—called the International Register—of the World Intellectual Property Organization (WIPO) in Geneva. trademark registrations under the Madrid Protocol emphasize the key role of locally registered trademark as it is the base for international applications.

The guidelines that will help trademark officials in India to function according to the mandates of the treaty, specify that a local brand owner can file an international application through the new system only if they have already registered or applied for the trademark in India.

Indian patents and trademarks office guidelines clarify that an international trademark registered in foreign countries is mainly based on the validity of the local trademark and that therefore any invalidation or modification of this trademark will directly affect the trademark registered in others countries through the Madrid Protocol. Since India is also a member-country of the Protocol, all the other signatories can also file their trademarks through the international registry operated by the WIPO.

According to the Indian guidelines, the fee for a single filing for international registration has been set at 2,000 for the local process and an additional Swiss Frank 650 for the WIPO processing fee. Both the fees need to be paid at the Indian office. Earlier, brand owners had to pay a fee ranging from $700 (around 43,000) to $1000 (around 62,000) in each country, along with charges for hiring local agents to handle the application as well as the pre- and post-registration procedures. “It saves a significant cost for brand owners and companies who want to register their trademarks in the international markets," said Sumathi Chandrashekaran, an intellectual property lawyer specialised in trademark law.

An industry executive agrees.

“The treaty (Madrid) provides us an easy route to protect our trademarks in most of the markets that we are focusing on, without having to deal with these registrations individually in each of the countries," an executive of an engineering firm said, requesting anonymity. “Although we need to keep our lawyers alert on any opposition or damage on the trademarks in the foreign destinations, the registration cost has become a fraction of what it used to be in the past."

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