Some important resources that will useful to anybody tracking the development of the Bill:
(a) The Trademark (Amendment) Bill, 2007.
(b) The Report of the Parliamentary Standing Committee.
(c) The Trademark (Amendment) Bill, 2009.
(d) The Rajya Sabha debates on the Trademark (Amendment) Bill, 2009.
(e) Our previous posts on the Madrid Protocol and the Trademark (Amendment) Bill, 2009 can be accessed here and here.
(f) The Trademark Act, 1999
(i) History of the Bill in Parliament: The Trademark (Amendment) Bill, 2007 was originally introduced in Parliament on 23rd August, 2007. Since the House did not take up the Bill for consideration in the prescribed time, the Bill lapsed and had to be re-introduced once again in 2009. However as soon as the Bill was introduced in the year 2007 it had been referred to the Department Related Parliamentary Standing Committee on Commerce, then headed by Dr. Murli Manohar Joshi. This Committee submitted its report in March, 2008. All but one of the recommendations of the Committee were adopted by the Government and the Trademark Amendment Bill as re-introduced in the year 2009 incorporated all of these changes.
(ii)The Amendments proposed by the original Trademark Amendment Bill, 2007: The main aim of the Bill as introduced in 2007 was to incorporate into Indian law the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Madrid Protocol will facilitate the filing of trademark applications across the world through a single application with the national office. The main advantage of this process is that it is expected to drastically reduce costs for trademark applicants and also to make the process much smoother for both domestic and foreign applicants. The world-wide process will be co-ordinated by the International Bureau of the World Intellectual Property Organization. All the major trading jurisdictions are signatories to this Protocol. Surprisingly, India has enacted this legislation before signing the Madrid Protocol. Hopefully the Government will move swiftly to sign the Protocol so as to operationalize the provisions of the amendments. As reported by us back in 2007, the Union Cabinet had given the go ahead to accede to the Madrid Protocol. The Bill as introduced in 2007, proposes the following amendments:
- An amendment to Section 21 of the Trademarks Act, 1999 to do away with the one month discretionary extension that the Registrar could grant in the case of an opposition to an advertised trademark. The amendment therefore restricts the time period to file an opposition to only 3 months from the date of registration.
- An amendment to Section 23 of the Trademarks Act, 1999 to ensure that a trademark is registered within 18 months of filing the trademark application.
- An amendment to insert Chapter IVA which would have new provisions such as Section 36A, Section 36B, Section 36C, Section 36D, Section 36E, Section 36F, Section 36G. These are the key provisions incorporating and implementing the provisions of the Madrid Protocol.
- An amendment to delete Sections 40, 41 & 42 of the Trademark Act, 1999. Section 40 places a restriction on assignment or transmission of trademarks where multiple exclusive rights would be created. Section 41 places a restriction on assignment or transmission where exclusive rights would be created in different parts of India. Section 42 states the conditions for assignments otherwise than in connection with the goodwill of a business.
- An amendment to Section 45 of the Trademark Act, 1999 to ensure that a person who has an assignee or licencee of a trademark cannot inititate any trademark infringement proceedings under the Trademark Act, 1999 until such time that the assignment or transmission has been registered with the Registrar of Trademarks under Section 45(1) of the Trademarks Act, 1999.
- An amendment to delete Chapter X of the Trademarks Act, 1999. This chapter deals with special provisions for trademarks relating to 'textile goods'.
- Miscellaneous amendments to Sections 150 and 157 of the Trademarks Act, 1999 in order to ensure consistency in the language of the remaining amendments.
(iii)The 84th Report of the Department Related Parliamentary Standing Committee on Commerce on the Trademark (Amendment) Bill, 2007: This Committee headed by Dr. Murli Manohar Joshi debated the merits of the Trademark (Amendment) Bill, 2007 for over 6 months. During the course of its deliberations several experts from leading law firms, think-tanks, bureaucrats etc. were called to put forth their views. The recommendations of the committee are as follows:
- Agreed with the Bill's proposal to do away with the discretionary powers of the Registrar in Section 21 to increase the time-period within which an opposition can be filed by a period of one month. The committee however recommended that the overall time period under Section 21 be increased to 4 months.
- Noted that the Trademark Registry was not equipped with the infrastructure to register trademarks within a period of 18 months from the date of filing of application as mandated by the amendment to Section 23 of the Act. As a result the Committee strongly recommended that the amendment to Section 23 not be brought into force until such time that the Trademark Registry is equipped to handle the same.
- An amendment to the proposed Section 36B of the Bill to ensure that the term 'real and effective is adequately defined in the Rules.
- An amendment to Section 36D(4) of the Bill to ensure that the term 'as soon as may be' is replaced with the phrase 'within the prescribed time limit' with the recommendation that the prescribed time limit should ideally not be more than 2 months. This provision basically deals with the time-span within which the Indian Trademark Office forwards the trademark application to the International Bureau.
- An amendment to Section 36E(3) of the Bill to ensure that the term 'without any delay' is replaced by the term 'within the prescribed time period', with a recommendation that the prescribed time period not be more than 2 months. Section 36(E)(3) speaks of the time limit within which the Trademark Registry should advertise an international application which is in order.
- An amendment to Section 36G of the Bill to ensure that a grace period of six months is provided for renewal of registration. This recommendation was made in order to ensure consistency with the Section 25 of the Act and Article 7(4) of the Protocol.
An amendment to insert a new Section 36H into the Bill. This proposed amendment by the Committee sought to ensure that a trademark owner “shall apply as far as possible the same trade description as to the standard of quality of its goods or services in all the Contracting Parties granting the protection.”
- The Committee objected against the removal of Sections 40, 41 & 42 as proposed by Clause 5 of the Bill as introduced in the year 2007.
- An amendment to the new Section 45 in order to insert the words “without the knowledge of assignment or transmission”. I”m not sure whether this clarifies anything.
(iv)The passage of the Trademark Amendment Bill, 2009 and the Rajya Sabha debates on it: The Minister for Commerce & Industry Mr. Anand Sharma introduced the Bill by explaining its salient features and informing the House that all but one of the recommendations of the Parliamentary Standing Committee were incorporated into the Bill. The only recommendation that was not agreed to by the Committee was the new Section 36H. The Minister informed the House that a 'Trademark' was meant only to indicate the source of origin and not the quality of the product. He, rightly, informed the House that quality control was a function of special purpose legislations such as the Consumer Protection Act, the Drugs and Cosmetics Act etc. For this reason the Government thought it fit to not include the proposed Section 36H. In response to the Minister, BJP leader Mr. Prakash Javadekar, argued against the Bill informing the House that there the Madrid Protocol was not part of the TRIPs agreement and that there was no obligation on India to sign this protocol which in his opinion would benefit foreign companies more than it would benefit Indians. He makes this point on the basis of the fact that while only 600 Indian companies file overseas trademark applications, over 10,000 foreign companies file trademark applications in India. He also made the very relevant point that one of the conditions imposed by E.U. in the FTA is that India signs the Madrid Protocol and that since the FTA was still under negotiation, India should have considered using the signing of Madrid Protocol as a bargaining chip. By passing the legislation, we may have lost an opportunity to bargain for extra concessions. For those of you losing faith in Parliamentary democracy I would recommend reading the entire debate for it is refreshing to see our MPs actually listening to one another.
(v) Conclusion: Now that the Bill has been passed by both houses the Union Government actually has to get down to signing the Madrid Protocol before it can notify into operation the provisions of this amendment.