In these posts, from an Indian perspective, I shall discuss the main points of ‘2019 Global Trademark Report Card’ by Trademark Working Group (Special 301 Submission for 2020) [For complete list of documents, click here].
i) Certification standards
The submission expresses its disapproval over the procedure for registration of certification marks (especially on 4-month opposition period regarding certification mark standards). It says that, as a result of the procedure, the owner of the mark may lose control over its certification standards.
Comments: I am not sure as to what the report meant by the last statement. A certification mark is a trademark, regulated by Sections 69 to 78 of the Trade Marks Act, 1999. There is a system in place to ensure that the provisions are not misused. As it is considered as a trademark, it enjoys certain rights. Therefore, I am not sure as to how it will lead to denial of control over the certification standards.
ii) Formalities associated with trademark
The report is critical of formalities associated with trademark. It states as follows: ‘Nations that impose formalities for documents used to apply for, maintain or otherwise protect trademark rights impose significant time and monetary burdens on trademark owners. There is no evidence that such requirements improve in any way the reliability of information used in trademark filings or contentious proceedings.’ The following formalities are noted:
- For filing trademark applications : power of attorney; notarized affidavit of use, if applicable
- For filing trademark maintenance : power of attorney
- For filing assignments of trademark applications or registrations : notarized deed of assignment; power of attorney from assignee; for registered marks, notarized affidavit of no legal proceedings
- For filing opposition proceedings : power of attorney
- For filing invalidation or cancellation proceedings : if before the Trade Marks Office, a power of attorney is sufficient; if before the Intellectual Property Appellate Tribunal, a cancellation action can only be filed if it is supported with all relevant documentation including a Vakalatnama (incorporating the signatures of all the lawyers of the firm and the opponent)
- For filing trademark infringement, passing off or unfair competition litigation : power of attorney
Comments: Unnecessary formalities are, of course, obfuscating. However, formalities cannot be done away with at the cost of compromising the integrity of the system. For the following reasons, I am of the view that the report hasn’t properly understood the Indian system. Further, it highlights so-called problems without offering any solution:
Relevance of Power of Attorney: Power of Attorney enables one to act on behalf of another. The Contract Act, 1872 and the Power of Attorneys Act, 1882 are relevant laws. Having a power of attorney can be equated to a principal – agent relationship. When an agent acts under the express or implied authority, the agent binds the principal. Trademark is a property. When somebody else files an application for registration, maintenance, assignment, filing invalidation or cancellation proceedings etc, one is acting on behalf of somebody in a property matter. As one acts on behalf of another and legally binds the other, power of attorney is a legal necessity in such situations.
Relevance of Notary: Notarised affidavits, notarized deeds etc are required in some trademark procedures. Notaries are appointed under Notaries Act, 1952. A notarial act is not a mechanical act. Notarisation gives affidavits and deeds a certain degree of sanctity especially from the perspective of evidence law. India is not the only country to use the mode of notarization to authenticate documents.
Filing Vakalatnama: It is apparent that the report has not understood the legal status of trademark office and IPAB. While trademark office is an administrative body, the IPAB is a tribunal (quasi judicial body). When one appears before a quasi-judicial body like IPAB in a proceeding, the Indian system demands the filing of Vakkalath (a document signed by the party to the proceeding which authorizes the concerned lawyer to appear on behalf of that party). I do not understand as to how that can be considered as an unnecessary formality.
[Please note that the IPAB has two key functions: i) deciding appeals from the Indian Patent and Trademark Office; and ii) determining the validity or otherwise of granted patents and trademarks. It cannot decide on trademark infringement (or any IP infringement for that matter), passing off or unfair competition. Such matters can only be agitated before courts. And filing a vakkalath is a sine qua non. IPAB’s jurisdictional purview is limited to two IP categories, namely, patents and trademarks. It does not extend to others, namely, copyright, industrial designs, trade secrets, geographical indications etc.]
Madrid Protocol: India is now a party to the Madrid Protocol. The report is, however, critical of the fact that subsequent designations can be done only with regard to registrations obtained post-08 July 2013. The report notes that, ‘these practices necessitate the filing of either national applications in the affected countries or a new international application in order to obtain a registration through the Protocol in these countries, thereby defeating some of the benefits of using the Protocol.’
Comments: The report has highlighted a problem without offering a convincing solution. If subsequent designations can be done even with regard to registrations before 08 July 2013 (as the Report suggests), what will happen to trademarks already registered in India before this deadline which may conflict with those international registrations? That will open up a pandora’s box. The report is silent on this.