Over the last week, the Office of the U.S. Trade Representative (USTR) and the International Intellectual Property Alliance (IIPA) released reports on the current state of intellectual property (IP) protections for U.S. businesses abroad. These reports provide updated insights on foreign countries and foreign retail markets (both physical and online) that have recently caused U.S. businesses the most IP protection difficulties.
Here is a summary of the reports:
IIPA 2014 Special 301 Report Submission
On February 8th, the IIPA submitted their 2014 Special 301 Report Submission to the USTR. As one of the largest U.S. lobbying groups for the copyright-based industries, the IIPA’s submission identifies the foreign countries the IIPA believes provides the most ineffective IP legal protections for U.S. businesses. The USTR’s final Special 301 Report (released annually April-May) provides reporting to the U.S. government and the general public on the countries that, according to the Omnibus Trade and Competitiveness Act (19 U.S.C. § 2242(a)), deny “adequate and effective protection of [IP] rights” or “fair and equitable market access to United States persons that rely upon [IP] protection.”
Although the U.S. government rarely imposes trade sanctions based on the Special 301 Report, a country’s listing in the final report often impacts the U.S.’ trade relations with that country and the degree to which the U.S. government initiates trade promotional activities with the same. From both a private sector and practical standpoint, the Report also represents a review of the markets that U.S. businesses have had the most IP protection challenges.
What countries did the IIPA recommend for inclusion in the 2014 Special 301 Report?
Priority Foreign Countries. For a second year in a row, the IIPA has identified Ukraine as being a “Priority Foreign Country.” This is the least favorable designation available under the Special 301 reporting system. Specifically, it identifies that country as one with the “most onerous or egregious acts, policies, or practices” that “have the greatest adverse impact (actual or potential) on the relevant [U.S.] products” without making efforts to ameliorate their status. 19 U.S.C. § 2242(b)(1)). Ukraine’s designation as a Priority Foreign Country was based on a number of factors, most notably the absence of effective online copyright enforcement, and unfair and non-transparent royalty society collections. Shockingly, the classification was also based on reports of widespread software pirating by Ukrainian government agencies.
Priority Watch List and Watch List Countries. The IIPA’s Special 301 Report Submission lists Argentina, Chile, China, Costa Rica, India, Indonesia, Russia, Thailand and Vietnam on the “Priority Watch List,” and Belarus, Brazil, Bulgaria, Canada, Ecuador, Greece, Israel, Kazakhstan, Kuwait, Mexico, Romania, Saudi Arabia, Switzerland, Taiwan, Tajikistan, Turkey, Turkmenistan, United Arab Emirates and Uzbekistan as “Watch List” countries. Although not as a severe rating as a Priority Foreign Country, being listed as a country on the Priority Watch List or simply Watch List means that a country has potential IP protection deficiencies that require varying levels of USTR monitoring.
Newly Non-Listed Countries. It is also important to note that the IIPA has recommended removing a number of countries from the final 2014 Special 301 Report due to their improvements in IP protection. These countries include Barbados, Bolivia, Colombia, Dominican Republic, Egypt, Finland, Guatemala, Jamaica, Lebanon, Pakistan, Paraguay, Peru, Trinidad and Tobago, and Venezuela.
Out-of-Cycle Review of Notorious Markets
Also, on Wednesday, the USTR released an Out-of-Cycle Review of Notorious Markets that identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial IP piracy and counterfeiting. The Review includes particular social media and file transferring sites hosted abroad, including sites hosted in Antigua and Barbuda, Bulgaria, Canada, China, Czech Republic, Finland (possibly), Netherlands, Poland, Russian Federation, Spain, Sweden, Ukraine, United Kingdom and Vietnam. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Paraguay, Spain, Thailand and Ukraine were also deemed notorious.
What’s The Takeaway? Every foreign market has its own IP protection challenges. U.S. businesses that are exploring expansion into new markets should consider the IIPA’s Special 301 Report Submission (as well as the USTR’s Final Special 301 Report due out later this year), and the USTR’s Out-of-Cycle Review of Notorious Markets to help evaluate the IP risks associated with such markets. Doing so can help to ensure that such businesses can better protect their IP assets as they expand.
Late last month, the European Commission approved for publication (pre-registration) a geographical indication (GI) application for the Danish cheese HAVARTI. This raised concern amongst interested industry groups, and should cause concern amongst all export-focused businesses. Similar to trademarks, and particularly certification marks, GIs are legal protection granting producers of a particular type of product from a specific geographical region the exclusive right to use the geographical region’s name (or a regionally-known name) on their products and in related promotions. Being an exclusive right, GIs exclude producers from other regions from labeling and marketing similar or identical products under the same GI name. This means, for example, that a U.S. sparkling wine can never be sold as CHAMPAGNE in the EU, or a Kenyan tea as DARJEELING in India. If registered, the EU HAVARTI GI would exclude non-Danish cheese producers from labeling and promoting their Havarti cheeses in the EU as HAVARTI.
So what’s concerning about the potential EU HAVARTI GI registration for non-dairy businesses? Well, industry groups such as the Consortium for Common Food Names (CCFN) argue that allowing the EU HAVARTI GI application to be registered would contravene international standards by prohibiting non-Danish cheese producers from labeling and promoting their own Havarti cheeses in the EU as HAVARTI, even if they meet recognized international Havarti cheese production standards. From an intellectual property perspective, the registration would arguably expand EU GI protections to common (generic) named products. Commonly named GIs such as DIJON for mustard and CHEDDAR for cheese have traditionally been restricted from GI protection due to their common vernacular usage. HAVARTI is a widely known cheese variety this is arguably as generic as these other excluded food names. By allowing HARVARTI’s potential GI registration, the European Commission could possibly allow other generic named products to be registered as GIs, thereby hindering the promotional efforts, and ultimately success of many foreign goods in the EU.
Although the potential HAVARTI EU GI registration only directly impacts the global dairy industry and the EU market, it does underscore general issues all export-focused businesses should be aware of concerning GIs. Many businesses are unfamiliar with GIs, much less the extent to which GIs can impact their expansion and success in new foreign markets. GIs are granted legal protections in multiple countries for a wide array of goods, and can significantly impact a business’ foreign operations.
Below are some GI issues businesses should consider when entering new foreign markets:
Know the Practical Differences Between GIs and Trademarks. Before understanding what GIs restrictions a business may face in a foreign market, a business needs to recognize how GIs and trademarks differ. Unlike trademarks, GIs do not indicate or represent a individual business or their goods and services. They instead represent protections for the local conditions—natural or human-made (depending on the country)—that give products from a region their qualities and reputation. Based on these localized and natural characteristics, GIs cannot be extended, shared, or transferred to producers outside the region, and cannot be cancelled once registered. Further, in many countries that grant GIs legal protection such as the EU, member state governments, not individual producers or businesses, prosecute GI infringement claims. This means a foreign business can be assured that their unauthorized use of a registered GI in a foreign market will more likely subject them to a greater risk of legal action in that country compared to the threat of a lawsuit from a individual trademark owner.
The bottom line is that GIs prohibit exporting businesses from promoting and selling their goods in a particular country under a registered GI without much recourse.
Determine if an Export Market Recognize GIs—and to What Degree. After understanding the important differences between GIs and trademarks, businesses need to then evaluate whether the markets they wish to export to have GI protections and the extent of such protections. Nearly all countries recognize GIs for wines and alcoholic beverages through their World Trade Organization (WTO) commitments. Under Articles 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), WTO member states are required to extend specific GI protections for wines and alcoholic beverages, and to a reduced degree other agricultural and natural products. Most common law jurisdictions (U.S., Australia, and Japan, etc.) generally only extend GI protections to wines and alcohol beverages based on their WTO commitments. Yet, many countries, including several substantial markets, have gone beyond TRIPS’ minimum standards by providing enhanced GI protections to non-wine and alcohol agricultural products, and even non-agricultural products. The EU, China, India, and Russia, among others, extend the same level of legal protection to all agricultural and natural product GIs. Brazil, China, India, Russia, and Switzerland even extend GI protections to human made goods such as handcrafts and textiles.
Determine if There are Existing GI Registrations for Your Goods. Once a business determines whether the market(s) they wish to export their goods possess GI protections, they must evaluate whether the names of the goods they wish to use on their goods and related promotions are registered GIs. To do so, businesses must examine national GI registers in such export market(s).
Below are GI registers for some of the world’s major GI jurisdictions.
National GI Register
|National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial -INPI)|
|General Administration of Quality Supervision, Inspection and Quarantine|
|The Controller General of Patents, Designs, and Trade Marks|
|Federal Institute of Industrial Property|
Photo courtesy of Abdallah Iskandarani.
Earlier this month, I received a message from WordPress notifying me of the one year anniversary of The IP Exporter. As blogging on cross-border and trade-related IP issues over the past year has had results that I never imagined, I thought I would take this opportunity to take a look back at some of my impressions over the past year.
The outpouring of support and feedback I have received from other legal practitioners and those with an interest in the ever-changing world of cross-border IP protection has been the most remarkable aspect of blogging for The IP Exporter. Attorneys and IP specialists from all over the world have not only read my blog (which is a shock in itself!) and shared it with friends and colleagues, but they actually commented on it and told me that it helped in their research and the actual legal issues they were facing. As a relatively young attorney, I have been heartened by this positive feedback. Also, such communication has led to a number of guest writing and professional legal opportunities that I would not have had without blogging.
Another amazing thing I have found about blogging for the The IP Exporter has been seeing which cross-border IP issues have struck accord with my readers. Each time I blog, I am unsure whether an issue I think is interesting is relevant or important to my readers. Some postings I have made on issues that I think are not earth shattering, such as whether to register a trademark in India under the Madrid Protocol or directly through India’s trademark office (The Controller General of Patents Designs and Trademarks), have been the most read postings I have written.
Lastly, the ability to connect with people throughout the world has made blogging an amazing experience. I never thought people from so many different countries would read The IP Exporter. To date, readers from over 90 countries have read The IP Exporter, and much of my readership comes from places I never expected, such as India, Malaysia and Russia. I am also continually amazed about what I blog or tweet about, much of which takes place in countries on the other side of the globe, have resulted in direct feedback from those in such countries. For instance, when I tweeted in July this year about a story on how a hair salon in Dubai, United Arab Emirates was using promotional materials that were alleged to be confusingly similar to Facebook’s protected branding, I received the above photo soon thereafter by a local resident who found it on his car. Although, it is not a complete surprise that I would receive such feedback in this globalized age, I still find it remarkable.
What’s The Takeaway? Blogging over the past year has been an amazing experience. It has made me grow as a writer and as a legal practitioner. More than personal and professional growth, it has made me realize how large a need there is for people to know more about cross-border and trade-related IP issues. The culmination of these experiences has energized me and my efforts to blog on these topics.
What cross-border or trade-related IP issues are you facing?
The Canadian Parliament reintroduced proposed legislation late last month that will dramatically impact how foreign copyright and trademark owners can protect their rights in Canada, and ultimately around the world. Reported to be enacted by the end of this year, the Combatting Counterfeit Products Act (Bill C-56; CCPA) proposes specific amendments to Canada’s Copyright Act and the Trade-marks Act that will allow foreign rights owners to better control the cross-border flow of counterfeit goods in Canada. The CCPA provides several notable reforms, including the expansion of registerable trademarks and new claims of recovery for trademark counterfeit goods. However, I believe its most important proposed reform is the establishment of a system allowing rights owners to register their copyrighted works and trademarks with Canadian authorities—while gaining help in detaining counterfeit shipments entering and leaving Canada.
The CCPA’s proposed request and detention system is an expansion of legal protections against counterfeit goods under current Canadian law because it introduces non-judicial measures rights owners can use to prevent the import and export of counterfeit goods in Canada. Currently, rights owners must obtain a Canadian court order to halt infringing imports and exports of counterfeit goods in and out of Canada. The CCPA addresses these limitations by allowing copyright and trademark owners to file a request for assistance with the Ministry of Public Safety and Emergency Preparedness (Ministry). This allows Canada’s border authority, the Canadian Border Services Agency (CBSA), to monitor inbound and outbound shipments of counterfeit products for a two-year period, and temporarily detain counterfeit good shipments to allow further investigation.
Although rights owners will be required to provide a security deposit and fees for a detention, the request and detention system will provide a more expedient, inexpensive and overall more effective means for foreign rights owners to prevent the dissemination of counterfeit products, both in Canada and beyond. Filing a request for assistance with the Ministry is a faster and relatively less expensive procedure that seeking a court order. It also allows the CBSA to assist in policing shipments, complementing any monitoring activities conducted by foreign rights owners, and ultimately improving a foreign right owner’s overall global IP enforcement efforts.
Despite these benefits, the proposed request and detention system also has limitations:
Goods for Personal Use: The CCPA’s system does not cover counterfeit goods for personal use, such as those in personal baggage.
Parallel Importation: The system excludes copyright grey goods, namely copies of copyright-protected works made in a country outside of Canada where the copies were authorized to be made.
Transshipment: The CCPA’s system does not apply to transshipments. This means that foreign rights owners’ requests to the Ministry will not assist in detaining shipments of counterfeit goods that are only intermediately transiting Canada.
National Treatment: A foreign rights owner’s access to the request and detention system may also be limited depending on the type of IP they wish to enforce. A foreign copyright rights owner can likely access the system regardless if they are Canadian or if their work was created in Canada due to the legal protections provided in the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention). The Berne Convention allows a work from a Berne Convention country (Berne Convention countries) to qualify for protection in another Berne Convention country when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country, the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country.
If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country. This means that if a foreign work becomes attached, and qualifies for protection under Canada’s Copyright Act, a copyright rights owner will have copyright protection for their work in Canada and may utilize the CCPA’s request and detention procedures once the CCPA is enacted.
Trademark rights owners will not be as easily able to utilize the CCPA’s system. Unlike copyrights, trademarks are generally territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. This means that a trademark owner must generally have registered their mark in Canada in order for them to utilize the CCPA’s trademark request and detention system. Further, as Canada is not a member to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (aka the Madrid Protocol), foreign trademark owners need to obtain a Canadian trademark attorney to register their marks in Canada.
What’s The Takeaway?: The CCPA will give foreign copyright and trademark owners more effective and less expensive tools to protect their copyrighted works and trademarks in Canada and beyond. Its request and detention system does this by not only restricting imports of counterfeit goods, but also limiting their dissemination from Canada to other countries. Yet, the CCPA underscores the vigilance that foreign rights owners must have to ensure that they register and re-register requests for assistance for their works and marks. Only copyright and trademark owners (not authorized parties, e.g. licensees) can file requests with the Ministry to utilize the system’s full protections.
Further, the CCPA shows that foreign trademark owners who are serious about protecting their brands in Canada, and ultimately throughout the world, need to consider registering their marks in Canada in order to effectively utilize the CCPA’s request and detention system once it is enacted. Upon doing so, such owners can better insure protection for their marks in Canada and beyond.
Co-Authored by Shreya Ley, Attorney and Owner of Lay Roots
You may have thought that this summer was all about capturing that certain bohemian-chic essence, but the true trendsetters are all talking about recent developments in Indian patent law. In April, the Indian Supreme Court ruled in Novartis AG v. Union of India & Others that Swiss pharmaceutical maker Novartis was not entitled to patent protections for their leukemia treatment drug Gleevec. The Indian Supreme Court’s rationale was heavily based on their efforts to stop pharmaceutical “evergreening” – a practice pharmaceutical companies use to extend the life of a patent by seeking patent protection of subsequent improvements to their drugs or alternative, novel uses for such drugs.
Novartis had been attempting to patent a new and improved version of Gleevec. It had been unable to patent the original version of the drug in India because India did not recognize or grant pharmaceutical patents prior to completing their implementation of their World Trade Organization obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 2005. Upon discovering an improved version of Gleevec, Novartis sought to gain patent protection in an effort to halt the rampant manufacturing of generic forms of the drug in India. However, the Indian Supreme Court found that Novartis had not created enough of an improvement in the new Gleevec to qualify the drug as a new invention. Since Novartis’ ruling, Indian courts have subsequently invalidated other similar patent applications as seen last Friday with the invalidation of the Glaxo Smith Kline’s cancer drug Tykerb.
The Novartis decision and other similar Indian court rulings that refused to grant patent protections to pharmaceutical improvements have become the major impetus for foreign businesses and governments to denounce the Indian patent system as being broken, unjust, or perhaps just biased against non-Indian inventors. Around the world, India’s stand against pharmaceutical evergreening has led such entities to decry the general state of innovation in India. Here in the U.S., the Pharmaceutical Research and Manufacturers of America commented that the Novartis ruling was a sign of India’s “deteriorating innovation environment” and the Office of the U.S. Trade Representative remarked that recent Indian patent developments have “raised serious questions about the innovation climate in India and risk hindering the country’s progress towards an innovation-focused economy.” Such rhetoric has inevitably led American and other non-Indian businesses to become weary of working with Indian resident companies and inventors, ”hear ye, hear ye, innovators around the world! Take heed of this warning tale!”
Well, “fear not!” Keep in mind that Novartis and the other related Indian court decisions only apply to pharmaceutical patents as such rulings have been based on a specific provision in the Indian Patent Act relating to incremental innovations in pharmaceuticals. So, given the limited applicability of Novartis and related cases, foreign businesses should simply forge ahead with their Indian business relationships, right?
Not quite so fast. Dealing with any foreign business, inventor, or entity comes with its own challenges and those looking to partner with Indian resident businesses should consider the following before getting too involved.
1. Get a Comprehensive Agreement in Place Beforehand. Many partnering businesses have a difficult time putting a written agreement together prior to beginning their business relationship. THIS. IS. A. MISTAKE. Getting a clear agreement in place beforehand is important for foreign businesses and their Indian counterparts to prevent future misunderstandings that could potentially derail their objectives and result in substantial costs. Such an agreement should not only clearly outline the parties’ rights and obligations with respect to the Intellectual Property (IP) created in their relationship, it should additionally cover business aspects of the relationship. Although a large part of such relationships is based on the IP, the business side encompasses what happens once IP is created and it is equally important.
Specifically, agreements should address the following:
What is being protected? The agreement should clarify for foreign businesses and their Indian counterparts the types of IP their relationship needs to protect. This can be as simple as designating that both patentable and trade secret innovations will be protected and as complicated as describing protections for each and every potential innovation arising out of the relationship, whether a part of the parties’ original intentions or not. This designation process will not only help to define the scope of the parties’ project, it will also help ensure that the parties seek appropriate protections and enforcement measure for their IP. Completing this exercise is especially important in a cross-border context as the enforcement of IP rights abroad may be more difficult than simply making sure everyone is on the same page from the beginning. India in particular has been notorious for lacking the necessary infrastructure to enforce IP rights efficiently.
Who gets ownership? Establishing ownership of resulting IP from an Indian business relationship is important in an initial agreement because countries vary in the rights they give to owners and inventors. For example, Section 2(p) of the Indian Patent Act uses the term “patentee” for patent owners that is defined as “the person for the time being entered on the register as the grantee or proprietor of the patent.” In contrast, the U.S. does not officially use the term “patentee” and most American inventors would probably assume that patentee refers specifically to inventors. As illustrated above however, “patentee” in India is not necessarily limited to inventors. Therefore, making sure that all parties are clear on who will be named inventors and who will own resulting IP is essential to ensuring a good business relationship with an Indian resident business or inventor.
Who gets paid? This, inevitably, is a difficult topic to discuss, and it is inextricably tied to IP ownership rights. When there is no money coming in, everyone wants to split things down the middle. However, once there is money or it looks like there will be no money, businesses start to quibble. In order to avoid costly, drawn out battles that could prevent businesses from furthering an otherwise fruitful relationship, it is important to outline how all parties are to be compensated for their hard work, time and ingenuity once their relationship has taken off as well as when it has reached its conclusion.
Outlining business plans in writing through an agreement not only forces the parties to talk about their innovation strategy, marketing plans, and production plans; it also enables them to have a clearer direction for their relationship. If anyone is worried that creating a detailed, written plan will inhibit their creativity, then remember that a good agreement should leave some room for flexibility. Allowing such flexibility can lead to great innovation and profitability. Ultimately, however, having a clear outline of where the parties’ want to go, how they want to get there, and what they need to get to that point (the “what” usually being the IP) can lead to a more profitable and innovative business relationship and can prevent costly future litigation.
2. Be Conscious of Indian Patent Filing Requirements and Tolling Restrictions. Understanding Indian patent application filing requirements and the interplay between them and other foreign patent filing requirements is essential for businesses to ensure the broadest global patent protections for their resulting innovations. The most important thing for non-Indian businesses to realize is that Section 39 of the Indian Patent Act requires that patent applications for any invention created with the help of Indian residents must first be filed in India. Yes, before filing an international application under the Patent Cooperation Treaty, before filing a U.S. patent application with the United States Patent and Trademark Office (USPTO), and before filing a patent application anywhere else, foreign businesses working with Indian inventors must file a patent application with India’s patent office (The Controller General of Patents, Designs, and Trademarks (Controller)).
Does that sound unreasonable? Foreign businesses may be able to apply for special permission from the Controller to initially file abroad, but don’t bet on the Controller bending the rules. If no special permission is given, a foreign business must wait for approximately six weeks after filing in India to file elsewhere.
So, if a foreign business has applied with the Controller and waited six weeks, they can now submit applications anywhere else…right? Sure! Just make sure not to dilly-dally because filing in India limits the amount of time a business has to file their patent application with the USPTO and other national patent offices. Knowing the timelines from start to finish of the Indian patent application system and how filing dates in India affect the requirements for filing applications in other countries can greatly impact business decisions.
Parting Thoughts. Go forth and innovate with Indian resident compatriots! The considerations above and recent Indian pharmaceutical patent decisions should not stop foreign businesses from doing so. Collaboration enables people to create great innovations, but every business relationship, whether down the hallway or across the world, has its own challenges and limitations. It’s good for businesses to be honest about those challenges and to create a plan for overcoming them before they run into them. These general suggestions don’t apply to everyone and it’s always wise to consult with qualified local counsel and persons who can advise on the particulars of a specific business. In the end, it will save businesses a lot of time, headaches, and money to simply invest in the relationship by setting it up correctly.
Also, no matter how overwhelming the planning process may seem, just remember, at least you’re not going up against Bollywood screenwriters who generously “borrow” from American film. In cases like those, it’s best to pop some popcorn, settle onto the couch, and enjoy the results – because the results ARE rather glorious, are they not?
Originally posted on Astronomy and Law:
The United Kingdom has relaxed many of its copyright laws, that have been criticized as “archaic.” The changes will impact a number of mediums, including computer games, paintings, photographs, films, books, and music.
Under pressure from various sources, including a report entitled “Modernising Copyright,” that was prepared in response to the Hargreaves Review of IP and Growth, commissioned by the Prime Minister and published in May 2011. In the report, Professor Ian Hargreaves concluded that “The UK’s current system is falling behind what is needed, especially in the area of copyright.” He recommended that the UK needed “an approach to exceptions to copyright which encourages successful new digital technology businesses both within and beyond the creative industries.”
After consulting with a number of stakeholders in the intellectual property community, the U.K. government agreed stating that: “Bringing the law into line with ordinary people’s reasonable expectations will boost respect…
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Originally posted on Phillips Ormonde Fitzpatrick:
Major League Baseball properties have opposed a raft of trademark non-use removal actions brought against them by the Australian Football League. It’s the SAN FRANCISCO GIANTS vs the GREATER WESTERN SYDNEY GIANTS in a trademark showdown.
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Last month, India officially acceded to The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). This will allow trademark owners from Madrid Protocol countries the ability after July 8, 2013 to register their trademarks in India based on their registrations in their home Madrid Protocol country. From an initial observation, registering a mark in India under the Madrid Protocol offers several advantages over a direct registration at India’s trademark office, The Controller General of Patents Designs and Trademarks (CGPDTM). Reduced filing fees and a uniform registration process are among these advantages. However, there are several issues trademark owners should evaluate when considering whether to a file a mark in India under the Madrid Protocol. First, it is important to understand how the Madrid Protocol works.
How Does the Madrid Protocol Work? The Madrid Protocol allows trademark owners to file an international trademark application based on a national trademark registration in a Madrid Protocol country (known as the “basic application” or “basic registration”) to obtain trademark protection in other Madrid Protocol countries. Once filed, an international application is submitted to the International Bureau at the World Intellectual Property Organization (WIPO) and evaluated based on international requirements. If approved, the trademark is registered for protection in countries designated in the international application (subject to such countries’ potential opposition). Once successfully registered, the trademark is treated as if it were filed in each of the foreign countries identified in the international application, subject to specific restrictions.
Central Attack. Determining whether an international registration is subject to central attack is the most crucial issue in determining whether to consider filing a trademark in India under the Madrid Protocol or directly with the CGPDTM. Central attack occurs when a basic application or its resulting registration of a mark is withdrawn, lapsed or renounced within five years of the international registration of the mark under the Madrid Protocol. When this occurs, all Madrid Protocol international trademark registrations filed under the basic application are invalidated. However, after this five year period, a trademark owner’s Madrid Protocol international registration becomes independent of its basic application. This allows a trademark to qualify for national registration in the foreign countries identified in the international registration regardless of its invalidation in its native Madrid Protocol country.
Based on these circumstances, a trademark owner who can ensure that their mark’s basic application or resulting registration will not be invalidated within five years after international registration under the Madrid Protocol may find registering their mark in India under the Madrid Protocol more advantageous. However, if a trademark owner knows that their basic application or resulting registration will likely face potential invalidation within five years of filing a Madrid Protocol international registration in India, a direct filing with the CGPDTM would likely be a more prudent choice.
**Important Note**: A trademark owner whose basic application or resulting registration is subject to potential central attack in their home country may seek national registration in another Madrid Protocol country as their basic application, and then file a international registration in India through the Madrid Protocol. This can be done if the owner has enough presence in that Madrid Protocol country to qualify as a “real and effective industrial or commercial establishment.”
As it is difficult to determine the threat of central attack or if a trademark owner can register their mark in a foreign Madrid Protocol member state, obtaining qualified counsel to assess such issues is always suggested.
Registration Costs. If costs are a trademark owner’s main concerns, the Madrid Protocol provides upfront cost savings. Yet, additional expenses may arise if an international registration is opposed. Although varying based on currency rates, legal fees and the number of registration classes, registering a trademark in India through the CGPDTM costs roughly between US$300.00-$500.00. In comparison, filing an international application under the Madrid Protocol can be substantially less. For example, a Madrid Protocol filing fee in the U.S. is US$100.00-$150.00 per class (excluding fees for the basic application and associated legal costs).
However, as Madrid Protocol registrations are subject to opposition from national trademark offices, a trademark owner’s Madrid Protocol registration that becomes subject to opposition by the CGPDTM may have to spend additional funds to overcome such an opposition. Under Article 5(1) of the Madrid Protocol, any Madrid Protocol member state trademark office may object to a Madrid Protocol international registration based on international criteria provided in Paris Convention for the Protection of Industrial Property. Defending against such an opposition may negate any cost savings obtained from a Madrid Protocol registration as a trademark owner would likely have to hire counsel to assist with such a defense. Although registering the same mark under a direct CGPDTM filing may also subject its owner to a CGPDTM action, working with qualified Indian counsel in registering a trademark directly with the CGPDTM may help to mitigate the risk of such an action, or at least provide immediate and knowledgeable assistance in the defense of a potential CGPDTM action.
Assignments and Amendments. Determining whether the Madrid Protocol should be utilized to register a mark in India also depends if the trademark owner intends to amend or assign the mark’s international registration. Article 9 of the Madrid Protocol only permits a Madrid Protocol international registration to be assigned to a person or entity who is a national, domiciled, or has a substantial business presence in a Madrid Protocol member state. This potentially limits the economic desirability of a Madrid Protocol international registration as it prohibits its assignability. For example, Canada and Brazil, two major world economies, are currently not Madrid Protocol members, meaning that their citizens or businesses may not likely become assignees to an Indian Madrid Protocol registration. If a trademark owner knows that they are likely to quickly assign their Madrid Protocol registration in India after registration, as a part of a sale of a business or otherwise, such foreign assignment restrictions should be considered when choosing how to register their mark.
Additionally, the Madrid Protocol restricts amendments to international registrations. An international trademark application filed under the Madrid Protocol cannot be amended once it is submitted for examination to the International Bureau at WIPO. These restrictions appear to run contrary to rights provided under Indian trademark law. Under Article 22 of India’s Trade Marks Act, the CGPDTM Registrar may allow a trademark application, either before or after registration, to be amended under “just” circumstances. If a trademark owner knows or believes that they will likely need to amend their Indian trademark application or registration, they should consider a direct registration with the CGPDTM over a Madrid Protocol registration because a direct registration will allow greater registration flexibility.
Parting Issues to Consider Regardless of Registration. Regardless of which Indian trademark registration process a trademark owners chooses, enforcing trademark protections in India remains challenging. In the 2013 Special 301 Report by the Office of the U.S. Trade Representative, India was identified as having judicial inefficiencies and insufficient criminal enforcement against IP infringers. These problems can make any type of trademark enforcement efforts in India difficult. Based on these concerns, trademark owners should work with qualified local counsel to ensure effective enforcement of their marks in India.
What does India’s Madrid Protocol accession mean for your business?
Originally posted on Biotech Boardwalk:
The European Commission recently announced that it is considering new competition rules for the assessment of technology transfer agreements. The changes could impact how companies transfer and license patents, know-how and software copyrights.
Under the EU’s current technology licensing regime, a Technology Transfer Block Exemption (TTBER) creates a so-called “safe harbor” for certain agreements deemed to have no anticompetitive effects. For instance, TTBER exempts certain agreements concluded between companies that have limited market power (market share not exceeding 20% for agreements between competitors and 30% for agreements between non-competitors).
As outlined by the Commission, changes to the TTBER would include provisions that lower the market share threshold for certain licensing agreements between non-competitors. In addition, passive sales restrictions between licensees, exclusive grant-back provisions, and no-challenge clauses would no longer fall under the safe harbor of the TTBER
The Commission also plans to revise its guidelines, which are used to…
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