Written by Jalaj Agarwal
Senior Editor at Law & Order
Fifth Year, B.A. LLB. Symbiosis Law School, Pune.
Disclaimer: Please note that the views expressed below represent the opinions of the article's author. The following does not necessarily represent the views of Law & Order.
Introduction
Trademarks are one of the most important and commonly used forms of intellectual property in today’s world.
A ‘trademark’ can be a sign, symbol, shape, word, letter, or a combination thereof, which distinguishes itself from the good of other enterprises and helps in its own identification. [1]
Hence a trademark is defined as a mark that can be graphically represented and is capable of distinguishing the goods and services of one person from those of others. A trademark, other than distinguishing goods from those of others, also serves as an important tool in the advertising of goods, building brand value, and ensuring the customer that the goods are of a particular quality, manufactured by a specific enterprise. The growing importance of trademarks in commercial activities can be credited to the increased competition among companies that are constantly undertaking trade on a global scale. Trademarks help in building goodwill for the company and are thus regarded as valuable business assets and important marketing tools.
The Madrid Agreement on the International Registration of Marks (1891) and the Madrid Protocol (1989) are the main international covenants covering the registration and usage of trademarks across the member-countries of the agreements. [2] It provides a convenient way of protecting trademarks in multiple countries by obtaining a single international registration that is recognized in all the member countries.
With the passage of time, trademark laws have developed and undergone several changes in order to adjust to the rapidly changing environment all over the globe. Various new forms of trademarks other than the traditional trademarks, such as domain names, three-dimensional shapes, and senses of touch, smell, taste, sight, etc. are being accepted and recognized internationally. Thus, protection in non-traditional trademarks has been a new trend for businesses. A recent example of such a case in India was when the Trademarks Office granted registration to the image of “The Taj Mahal Palace Hotel” in Mumbai as it became the first building in India to receive a trademark. [3]
Changes brought under Indian law
In order to accelerate the processes of liberalization and globalization in the economy and to fulfill its commitments towards the World Trade Organization (WTO) under the Trade-Related Intellectual Property Rights Agreement (TRIPS), the Indian government has, over the years, undertaken various steps to harmonize Indian Intellectual Property (IP) laws with international standards. India ratified its accession to the Madrid Protocol, on February 8, 2007, and was given accession to the Protocol by World Intellectual Property Organization (WIPO) on April 8, 2013, after the Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules 2013 were brought into force. [4]
The Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules 2013 were introduced by the Indian government with the primary aim to formalize the Indian Trademarks Law in accordance with the Madrid system. It provided for provisions related to the international registration of Trademarks. The Nice Classification published by WIPO was to be used for the classification of goods, among other changes. This was done in order to avoid any conflict with the laws of other countries where the applicant wants to maintain an international portfolio.
The Indian legal system already accepts the concept of ‘well-known’ trademarks, but it has recently intensified its practice on the declaration of trademarks as ‘well-known.’ A recent example of this is the declaration of the trademark ‘TCS’ as ‘well-known.’ [5]
Recent International Trends
Over the last few years there have been some important developments in trademark laws of various countries:
Canada affirmed the Madrid Protocol
In the year 2019, Canada became a member of the Madrid Protocol by making holistic changes in its trademark laws. The country joined three WIPO treaties, namely the Madrid Protocol, the Nice Agreement, and the Singapore Treaty. [6] By joining these treaties, Canadian enterprises will have a more efficient way of protecting their trademarks across the globe. This will also help to increase international investment by lowering the cost of the business in Canada.
The US mandated new requirements for foreign-domiciled applicants
The most important development in US trademark law in recent years was the introduction of a rule that requires all foreign-domiciled applicants to appoint a US licensed attorney if they wish to file an application with the United States Patent and Trademark Office (USPTO).[7] According to the USPTO, this rule was enforced to curb the increasing number of wrongly-filed/fraudulent applications. The measures were considered necessary to ensure effective compliance with federal trademark laws and to protect the integrity of the US trademark register.
China introduced the new Trademark Law (the fourth amendment)
China introduced the Trademark Law (the Fourth Amendment) that came into force in April 2019 with the objective of reducing the amount of trademark squatting and mala fide trademarks that were increasing rapidly in the country. Article 4 of the Trademark Law now provides that “Malicious trademark registration without an intention to use should be rejected.” According to this Article, such bad faith applications can be rejected at the application stage itself. [8] Furthermore, a maliciously registered trademark may be invalidated at any time by the TMO.
Malaysia replaced the old Trademarks Law in the country
Malaysia became another country that acceded to the Madrid Protocol in 2019, after Canada. A new Trademarks Bill (2019) was introduced, which replaced the 43-year-old previous Act. With this, applicants within Malaysian territory, for the first time, were granted the choice of selecting multiple classes when filing a trademark application for their good. The bill also provides recognition to non-traditional trademarks, such as the shape of goods or their packaging, sound, scent, color, holograms, positioning, and sequence of motion.[9]
European Union (EU) standardized trademark systems among member-states
With the objective to review and standardize the functioning of the trademark system within the members of the EU, the European Commission introduced the EU Trade Mark Directive 2015/2436 in December 2015. The directive was to be implemented by all member-states of the EU by January 2019. However, the member-states now have an extended deadline to do so by January 2023. [10] Some of the important changes enforced by this directive are: First, it replaced the word ‘community’ with the ‘European Union’, thus naming the new regulation 'European Union Trade Marks Regulation (EUTMR)'. The name ‘Community Trade Mark’ was changed to the ‘European Union Trade Mark (EUTM)’. [11] Furthermore, the most notable change is related to the removal of the requirement to represent trademark applications in a graphical format, as this makes the registration of non-traditional trademarks such as sight, sound, smell more convenient.
Conclusion
Many of the rapid and unparalleled changes in intellectual property law and policy Over the years have been a result of their enhanced role in international trade.
Unprecedented development and rapid globalisation in the fields of internet and digital media have led to the development of businesses and the provision of goods and services across the world to remote and inaccessible destinations. Due to this, the need to protect the brand-value of goods has become more vital and complex.
To deal with such constant developments and changes in International Trademark, protection laws have become the need of the hour. Various new types of trademarks are becoming more relevant, such as domain names, artificial intelligence, trademarks of senses, etc. Therefore, legal frameworks across our highly digitized world must prepare to encounter trademark applications that are more unorthodox and internationally-focused. Thus, it is pertinent that countries constantly reform their IPR laws, adopt a more flexible approach, and try to standardize their trademark laws in accordance with international standards.
[1] Trademarks. What is a Trademark? WIPO
[2] Summary of the Madrid Agreement Concerning the International Registration of Marks (1891) and a Protocol Related to that Agreement (1989), WIPO.
[3] Taj Mahal Palace: Now a Registered Trademark. Legal Service India.com.
[4] Madrid (Marks) Notification No. 199. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Accession by the Republic of India. WIPO.
[5] Tata Sons Limited & Anr v Mr. Charanjeet Shah & Ors., (2016) Delhi HC, C.S, Comm No. 1325
[6]Canada Joins Three Key WIPO Trademark Treaties, WIPO, March 18, 2019
[7]Trademark rule requires foreign-domiciled applicants and registrants to have a U.S.-licensed attorney, UNITED STATES PATENT AND TRADEMARK OFFICE, May 8, 2019
[8] LOKE-KHOON-TAN, China's Amended Trademark Law to Curb Bad Faith Filings, BAKER MCKENZIE, Nov 4, 2019
[9] Malaysia: A Synopsis of the Trademarks Bill 2019, ZICO LAW, May 29,2019
[10] SARKA PETIVLASOVA Et. MARTIN PROHASKA - MARCHRIED. How EU Countries are Implementing the Trade Marks Directive at National Level, May 1, 2019 at Vol. 74 No. 8, pg. no. 2
[11] Official Journal of the European Union, DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL, Eur- Lex, Dec 23, 2015
BIBLIOGRAPHY
1. Canada Joins Three Key WIPO Trademark Treaties, WIPO, March 18, 2019, https://www.wipo.int/portal/en/news/2019/article_0012.html
2. LOKE-KHOON-TAN, China's Amended Trademark Law to Curb Bad Faith Filings, BAKER MCKENZIE, Nov 4, 2019
3. https://www.bakermckenzie.com/en/insight/publications/2019/11/chinas-amended-trademark-law
4. Madrid (Marks) Notification No. 199. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Accession by the Republic of India. WIPO. https://www.wipo.int/treaties/en/notifications/madridp-gp/treaty_madridp_gp_199.html
5. Malaysia: A Synopsis of the Trademarks Bill 2019, ZICO LAW, May 29,2019
6. https://www.zicolaw.com/resources/alerts/malaysia-a-synopsis-of-the-trademarks-bill-2019/
7. Official Journal of the European Union, DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL, Eur- Lex, Dec 23, 2015
https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32015L2436
9. SARKA PETIVLASOVA Et. MARTIN PROHASKA - MARCHRIED. How EU Countries are Implementing the Trade Marks Directive at National Level, May 1, 2019 at Vol. 74 No. 8, pg. no. 2
10.https://www.inta.org/INTABulletin/Pages/Feature_2_EU_Trademark_Directive_7048-.aspx
11. Summary of the Madrid Agreement Concerning the International Registration of Marks (1891) and a Protocol Related to that Agreement (1989), WIPO. https://www.wipo.int/treaties/en/registration/madrid/summary_madrid_marks.html
12. Taj Mahal Palace: Now a Registered Trademark. Legal Service India.com. http://www.legalservicesindia.com/article/2459/Taj-Mahal-Palace:-Now-A-Registered-Trademark.html
13. Tata Sons Limited & Anr v Mr. Charanjeet Shah & Ors., (2016) Delhi HC, C.S, Comm No. 1325
14. Trademarks. What is a Trademark? WIPO. https://www.wipo.int/trademarks/en/
15. Trademark rule requires foreign-domiciled applicants and registrants to have a U.S.-licensed attorney, UNITED STATES PATENT AND TRADEMARK OFFICE, May 8, 2019 https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us