Incoming changes to Indian Trademarks and GI Laws

December 15, 2022
intellectual property explained step by step

By Pranit Biswas and Girishma Sai Chintalacheruvu

Two special presents addressed to the Indian IP fraternity appear to be making their way as Christmas goodies this year. The Trade Marks (Amendment) Bill, 2022 and the Geographical Indications of Goods (Registration and Protection) (Amendment) Bill, 2022 have made it on the list of (16) Bills that have been lined up for introduction, consideration and passing in the ongoing 2022 Winter Session of the Parliament.

Amendments to Indian Trade Marks law

According to various online sources, the Bill for Trade Marks seeks to introduce certain integral elements of the Madrid Protocol in the existing Indian Trademark framework, and proposes to amend the existing procedure of show cause hearings and opposition hearings. The key highlight of the amendments are reportedly those relating to the Madrid Protocol, specifically, to facilitate the concept of “transformation” and “replacement” of WIPO’s International Registrations designating India.

Being a signatory to the Madrid Protocol since 2013, the current framework of trademarks in the Indian scenario recognizes and accommodates the registration of International trademarks by way of designation, upon making an application to the International Bureau of the World Intellectual Property Organization (WIPO). However, there currently exists no provision for the transformation and replacement of such international trademarks. Thus, if the International Registration on the basis of which the Indian designation is filed, gets cancelled, the same would constitute a death kneel for the Indian designation, if the application is not “transformed” (as envisaged under Article 9quinquies of the Protocol) to a national application. Unfortunately, there has never been any proper implementation of the “transformation” provision in India, due to which quite a few Registrants have regrettably lost their rights. Thus, it is hoped that with these new mooted amendments, transformation in India would be a seamless process.

 Amendments to Indian Law of Geographical Indications (GIs)

The Bill for Geographical Indications of Goods primarily deals with the simplification of procedures around the subject, and also proposes a streamlined process to increase accessibility to stakeholders. Currently, the procedure for procuring a GI Registration is a 10 step process much like trademark registration, which includes various stages of Application, Examination, Publication and Registration. With the IPAB being dissolved and the functions thereof being transferred to the Registrar of Geographical Indications and the High Courts, the need for procedural reforms is indeed the need of the hour, taking into account the pre-existing backlog of court cases.

CONCLUSION

While the Winter Session has 17 scheduled sittings to be conducted through December 29, 2022, the abovementioned Bills are yet to be tabled in the Parliament. It is hoped that the amendments would come through at the earliest, and pave way for easier/ smoother TM and GI procedures in India.

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