The BRICS countries (Brazil, Russia, India, Chi- na and South Africa) held an annual summit in Brazil in July 2014 leading to some significant developments, including the establishment of the BRICS’ New Development Bank. Atten-
tion has been drawn to the potential of these developing economies due to many factors, including their combined population, GDP and exemplary growth rate (as shown in Figure 1). Economist and Former Chairman of Goldman Sachs, Jim O’Neill, in his book, The Growth Map: Economic Opportunity in the BRICs and Beyond, mentions that “Brazil, Russia, India and China are emerging countries whose size gives them the potential to overtake today’s largest economies, the G7, by 2050.”
BRICS combined GDP grew more than 300 percent in the last decade.
Figure 1, Source: 6th BRICS Summit, Brazil (July 2014). Statistics available at www.brics6.ita- maraty.gov.br/.
BRICS’ focus on IP grew at its Annual Summit in Durban, South Africa, in 2012, where the group’s trade ministers endorsed a BRICS Trade and Investment Cooperation Agreement, which specifically included a provision for cooperation in IP. To move forward the coop- eration among the BRICS IP offices, a road- map dubbed the Intellectual Property Offices Cooperation Roadmap was agreed upon in Magaliesburg, South Africa, on May 16, 2013, and was signed alongside the World Intellec- tual Property Organization’s (WIPO’s) annual General Assemblies in Geneva, in September 2013. This roadmap has the following goals:
- Promotion of public awareness of IP in BRICS countries
- Examiner exchange programs
- Information services to be enhanced by an exchange of patent information, and best practices provided by each office
- Training of Intellectual Property Office Staff
- National IP Strategy and IP Strategy for enterprises
- A review of filing procedures within the group, improvements in office practices, and increased innovation and commercialisation among the countries
- Collaboration in international forums
Worldwide, more and more trademark holders and businesses are filing trademark applica- tions via the Madrid Protocol. According to a WIPO press release dated March 13, 2014,
in 2013 there was an 6.4 percent increase in filings under the Madrid System, with a total of 46,829 Madrid applications filed. Recognizing the growing importance of International Reg- istrations of Marks under the Madrid System, BRICS countries are consistently amending their laws and procedures in accordance
with the international conventions. With the accession of India to the Madrid Protocol on April 8, 2013, Brazil and South Africa are the only BRICS countries yet to become members of the Madrid Protocol.
This article discusses the implementation and adoption of International Registrations of Marks under the Madrid Protocol in Russia, China and India, as well as the status of accession to the Madrid Protocol in Brazil and South Africa.
Comparison of the Trademark Laws of BRICS Countries
There are certain basic differences in the trademark laws of the various BRICS countries, including the filing basis and the duration of the non-use period warranting removal of a trademark, as shown in the table on page 13.
Filing Under the Madrid Protocol: Comparative Analysis Among India, Russia and China
According to WIPO’s Madrid Yearly Review, in 2013, China was the most frequently desig- nated Madrid member, followed by Russia. China was the only Madrid member to exceed 20,000 total designations, while Russia received a total of 18,239 designations, con- sequently recording one of the highest growth rates (9.6 percent).
Similarly, it is expected that India, as one of the world’s growing economies, will file more international applications in the coming years and will be selected often as a designated country by trademark holders worldwide.
India
India’s accession to the Madrid Protocol on April 8, 2013 was preceded by necessary amendments in the domestic IP regime. The Trademarks (Amendment) Act, 2010, as well as various administrative changes, including the following norms and standards, were intro- duced to adapt to the changing regime:
- Trademarks (Amendment) Act, 2010 includ- ed a new chapter (Chapter IV A) incorporat- ing special provisions relating to the pro- tection of trademarks through international registration under the Madrid Protocol. Sections 36A to 36G of the Trademarks Act contain the provisions with respect to International Registration of Marks under the Madrid System. Under these provisions (Sections 9, 21, 63 and 74 of the Act), on receipt of notification from the International Bureau with respect to a particular mark, the Registry will examine the mark, adver- tise or refuse the application and apprise the International Bureau with respect to the same within 18 months of the date on which it received the notification.
- To comply with these time limits, a number of infrastructure upgrades have been intro- duced, one of the major reforms being digi- tization of the trademark department of the Office of the Controller-General of Patents, Designs and Trademarks and trademark fil- ings. To a great extent, the implementation of these reforms has accelerated the process of registering marks and clearing the backlogs in examining trademark
Moving Towards Madrid
Brazil
Brazil has not yet acceded to the Madrid Pro- tocol. On April 9, 2013, CAMEX (the Brazilian Chamber of Foreign Trade of the Federal Government), in its consideration on accession to the Madrid Protocol, approved Brazil’s ac- cession; however, the treaty has not yet been submitted to Congress.
On May 16, 2013, the National Institute of Industrial Property (INPI) issued Resolution
No. 89/2013, which took effect on May 21, 2014, after being published in the Official Gazette (No. 2211). The Resolution introduced important changes to the procedure for filing trademark applications, including mandating a deadline for the implementation of a multi- class system. It also introduced certain pro- visions relating to the classification of goods and services and the classification of figurative elements. Following are some of these import- ant changes:
- Article 14 of the Resolution provides that within 90 days from the effective date (i.e., May 21, 2014) of the Resolution, the INPI must begin to allow electronic filing of all trademark
- Article 13, which is aimed at achieving greater consistency, transparency and speed in trademark examinations, establish- es a 180-day deadline for the INPI to publish a table defining which markets are related to each other. Examiners can use this table to examine oppositions, appeals and adminis- trative nullity
- Article 12, establishes a 180-day deadline for the INPI to “implement mechanisms which permit and regulate” the filing of mul- ticlass applications.
The administrative changes necessary to comply with the Madrid Protocol have already been initi- ated, i.e., to reduce the time it takes to examine applications in order to comply with the Madrid
System’s rules (which provide for a maximum period of 18 months for examination).
South Africa
South Africa continues its consideration of joining the Protocol. In recent years, the
laws of South Africa have been amended to accommodate the changes. Previously, it was thought that South Africa could not join the International Registration System because its Department of Trade and Industry was not
able to meet the turnaround times prescribed by the international system (i.e., the 18-month deadline for examining applications). That is no longer the case, as trademark applications are now typically examined within nine months of filing.
Conclusion
The International Registration of Marks under the Madrid System is an appealing one-stop solution for member countries to register trademarks and to establish their global foot- prints. The Madrid Protocol has been generally well accepted and appreciated in the BRICS by the countries that have adopted it. The indications are that the number of outbound registrations from existing BRICS members of the Madrid System (Russia, India and China) are set to grow and may be joined by Brazil and South Africa in the distant future.
| Country | Brazil | Russia | India | China | South Africa |
| Trademark Office | National Institute of Industrial Property | Federal Service for Intellectual Property (ROSPATENT) | Office of the Con- troller-General of Patents, Designs and Trademarks | State Administration for Industry and Commerce of the People’s Republic of China (SAIC) | Department of Trade and Industry, Companies and Intellectual Property Com- mission (CIPC) |
| Statute Followed | Industrial Property Law No. 9279/96 | Trademark Law No. 3520-1 of Septem-
ber 23, 1992 |
Trademarks Act, 1999 and Trade-
marks Rules, 2002 |
Trademark Law of the People’s Repub- lic of China | Trademark Act of 1993 |
| Filing Basis | First-to-File | First-to-File | First-to-Use | First-to-File | First-to-Use |
| Removal of Trademark on Basis of Non-use | 5 years | 3 years | 5 years 3 months | 3 years | 5 years |
| International Treaties in Force (Year Treaty Came into Force) | • Nairobi Treaty (1984)
• Paris Convention (1884) |
• Madrid Agreement (1976)
• Madrid Protocol (1997) • Nairobi Treaty (1986) • Nice Agreement (1971) • Paris Convention (1965) • Singapore Treaty on the Law of Trademarks (2009) • Trademark Law Treaty (1998) |
• Madrid Protocol (2013)
• Nairobi Treaty (1983) • Paris Convention (1998) |
• Madrid Agreement (1989)
• Madrid Protocol (1995) • Nice Agreement (1994) • Paris Convention (1985) |
Paris Convention (1947) |
| Basic Fee; Office of Origin | N/A | CHF 653 | CHF 653 | CHF 653 | N/A |
| Country of Designation | Individual/Complementary Fee | ||||
| India | N/A | CHF 100 | – | CHF 249 | N/A |
| Russia | N/A | – | CHF 51 | CHF 100 | N/A |
| China | N/A | CHF 100 | CHF 51 | – | N/A |
When You Need to Know
Whether undertaken as an assessment of trademark rights or an evaluation of the adequacy of internal management systems, a trademark audit has to be thorough to offer an accurate picture of a company’s brand name activity. For tips on navigating the myriad details associated with the exercise, see “Trademark Audits” in INTA’s exclusive Practitioners’ Checklists series.