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Madrid Protocol in force in India as of 8 July 2013

India is reputedly the country where trademark applications take the longest time to be examined, and if objected to, to achieve registration. According to recent statistics, they receive close to 200,000 applications in the past year (i.e. pre-Madrid Protocol) but issued close to only 50,000 registrations. You can imagine the build-up of pending applications. “Recent” applications are estimated to take about 3 years to be examined while some old applications continue to escape attention.

 

The Madrid Protocol came into force in India on 8 July 2013.  What would the coming into force of the Madrid Protocol in India mean against this backdrop?

 

1. Good news in terms of transferability of International Registrations
Indian companies and companies with real and effective industrial or commercial establishments can be holders of International Registrations. Since some of the world’s wealthiest organizations are in India, and many European companies are being sold or offered for sale lock, stock and barrel, Indian companies being in a good position to take over trademark portfolios including International Registrations, may be a positive (even if small) development.

 

2. Good news for applicants outside of India??
Applicants outside of India requiring trademark registration in India can decide to file national applications or designate India in an International Registration. The national applications are still being examined at a slow pace and there is concern that the allocation of the already over-strained resources to attend to Madrid applications designating India will only lead to an increase in backlog in the national applications. If one chooses to seek protection in India by designation of India in an International Registration, there is at least the requirement under the Madrid Protocol for the Indian Registry to complete examination within 18 months of being notified by the International Bureau of the request for protection in India. It remains to be seen how the Indian Registry will cope with this but the provisions of the Madrid Protocol puts pressure on the Registry to be attending to the applications under the Madrid system (possibly meaning reduced attention to the national applications).

 

3. Unlikely to have much impact on Indian Applicants’ filings in other Madrid Protocol countries.
Acceding to the Madrid Protocol also means that Indian companies can choose to protect trademarks abroad by designating the Madrid Protocol countries in an International Registration rather than filing national/regional applications in each of these territories. However, the International Registrations filed through the Indian Registry will have to be based on an Indian application or registration. Where it will take a long time to know the outcome of the basic Indian application, Indian Applicants should consider carefully whether using the Madrid system for their overseas registrations will be a good choice. If they filed national/regional applications in the territories of interest, they may well secure the foreign registrations independent of the outcome of the Indian basic application much earlier.

 

On the other hand, Indian companies that have domicile or “a real and effective industrial or commercial establishment” in another Madrid Protocol country will have an additional option of filing an International Application through another Madrid Protocol country. For example, Tata Oil can probably benefit by filing a national Singapore application and then filing an International Application through IPOS. This may be worth drawing to the attention of Indian multi-nationals.

Make Singapore Hub for IP Disputes

Singapore government, as part of it's IP Hub masterplan, is pushing hard to make the country the preferred choice for IP disputes regionally. Singapore, of course, has a few things going for it in this regard, in particular, a clean and efficient judicial and arbitration system. Furthermore, Singapore law is being increasingly trusted to be neutral and commercially sensible by overseas companies. See full article at  http://www.singaporelawwatch.sg/slw/headlinesnews/28611-make-spore-hub-for-ip-dispute-cases-indranee.html?utm_source=email%20subscription&utm_medium=email

Proposed changes to patent system

There was a gathering of IP lawyers and patent attorneys at IPOS yesterday. An email had been sent some days before, announcing a briefing by IPOS on changes to the Patents Rules. Thinking this must surely refer to the recent substantive proposed changes to the patent system, yours truly mentally prepared herself for an afternoon of heated discussion between "them" and "us". It was therefore somewhat of a let-down when we were told that the briefing was for something else, and that it would indeed be brief.

So here they are, the 2 most recent changes to the Patents Rules, which will take effect later this month :

1. The Hungarian Patent Office joins the Austrian, Australian and Danish Patent Offices on the panel of search and examination authorities appointed by IPOS.

2. The fees for post-grant search and examination will be revised to range from between S$2,600 and S$3,800, up from the current S$2,340 to S$2,515. The revised fees for the Austrian Patent Office will only take effect some time next year.

Labels: ipos , patent

"Raffles" not similar to "Raffles Fine Arts Auctioneers"

The Registry of Trade Marks recently held that the mark “Raffles” was not similar to “Raffles FINE ART AUCTIONEERS”.

 

Raffles Fine Arts Auctioneers Pte Ltd (the “Applicant”) had filed to invalidate Raffles Corporate Consultants Pte Ltd's (the “Registered Proprietors”) registrations for the sole word “Raffles” (the “Raffles Marks”) for business management consultancy services and financial consultancy services under Class 35 and Class 36 respectively. The application was grounded on the basis that the Applicant had earlier rights in the unregistered marks “Raffles” and “Raffles Fine Arts” used in relation to business consultancy and financial solutions (“the Services”), such that use of the Raffles Marks would amount to passing off.

 

Raffles mark 1one of Raffles Marks

 

The Applicant had alleged goodwill in the mark “Raffles”. In support, the Applicant submitted evidence of its sales figures, official receipts issued to clients, promotional and advertising materials, a schedule of clients to whom they had provided advice and declarations made by clients. However, it was clear from the evidence that the actual mark used consisted of the words “Raffles Fine Arts Auctioneers”, and not “Raffles” per se. The Registrar also noted an absence of tax invoices for the Services, and commented that this made it difficult to prove the actual provision of such services.

 

Applicants MarkThe Application's Mark

 

Taking into account the sales volume and promotion of the Applicant’s marks, the Registrar was of the view that it had not acquired sufficient goodwill in relation to the Services.

 

With regard to the element of misrepresentation, the Registrar commented that it is the impact on the persons to whom the misrepresentation is addressed, and not the state of the mind of the defendant, that is material. In this case, the marks were found to be visually, aurally and conceptually dissimilar. Moreover, as the word “Raffles” is peculiar to Singapore, being the last name of her founder, Sir Stamford Raffles, the public would be more discerning of marks consisting of the word “Raffles”. As such, the Registrar held that there was no likelihood of confusion and therefore the element of misrepresentation was not present.

 

As the first two elements of passing off (i.e. goodwill and misrepresentation) were not made out, the Registrar found it unnecessary to consider the third element of damage. Consequently, the invalidation action was dismissed and the Applicant was ordered to pay the Registered Proprietors’ costs.

 

 

Citation :
In the matter of TM Nos. 06306/03 and 06307/03 in the name of Raffles Corporate Consultants Pte Ltd [2010] SGIPOS 1

 

No.2

We are proud to announce the arrival of Ravi's 2nd. It arrived about a week ago, all swaddled in white, causing quite a stir in the office. We are, of course, referring to the 2nd edition of "Trade Marks Act - A Commentary", published by the good people at Lexis Nexis. For a closer peek at the young 'un, please click here.

 

Congratulations, Ravi!