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India Signs Three WIPO Treaties That’ll Help Brand Owners With Trademarks

Here is the impact of India acceding to Vienna, Nice and Locarno agreements.

Different currencies. Photographer: Keith Bedford/Bloomberg
Different currencies. Photographer: Keith Bedford/Bloomberg

In a move that will help trademark owners and designers obtain protection for their work, India acceded to three key treaties—Nice Agreement, Vienna Agreement and Locarno Agreement—last week. These are multilateral agreements with the World Intellectual Property Organisation. The three WIPO treaties are designed to ease the search for trademarks and industrial designs.

Trademarks or marks is a name, logo or symbol representative of a company, a product or service. Think of the half eaten apple for Apple Inc. A trademark helps differentiate one company, product or service from another. Industrial designs, on the other hand, is a peculiar design applied to a product which can emphasise creativity or unique ability of a product—think a specific model of a car, or a bottle of cold drink.

These agreements refer to such marks and industrial designs and help identify the specific class to which they belong. A standardised classification system intends to help a brand owner protect his mark or design. In having one uniform classification, such person need not spend significant time and energy in identifying the right class, sub-class and so on under the laws of each individual country where he seeks protections.

For instance, as per Nice Classification, smartwatches, wearable activity trackers, laboratory robots, teaching robots, security surveillance robots, etc all belong to Class 9. So, a brand owner looking to register a trademark for any of these devices needs to refer to this one class across all applications made to different countries which are signatories to Nice Agreement.

It is crucial to pick the right class of trademark while filing the application as wrong classification of trademark could hamper the trademark registration process and/or diminish the legal protection for the mark under the law.

For those countries who are signatories to these treaties, one classification system will apply.

Vienna Agreement: For Figurative marks

Vienna Agreement establishes a classification for marks that consist of, or contain, figurative elements—such as mountains, moon, parts of human bodies, animals etc.

Nice Agreement: Classification of goods and services for registration of marks

This agreement helps establish a classification of goods and services for registering trademarks and service marks. List of classes include goods like alcohol, furniture and pharmaceuticals and services like legal, medical and advertising. Since the system is recognised in numerous countries, this makes applying for trademarks internationally a more streamlined process.

Locarno Agreement: International classification for industrial designs

This agreement deals with the classification of different industrial designs. The classification comprises of:

  • a list of classes and subclasses;
  • an alphabetical list of goods which constitute industrial designs, with an indication of the classes and subclasses into which they fall; and
  • explanatory notes.

Signing The Treaties: Impact?

These agreements are procedural and don’t relate to any substantive intellectual property norms, Shamnad Basheer, an intellectual property lawyer and founder of SpicyIP told BloombergQuint.

The classifications that India followed until now did not tally completely with international norms. Advantages of signing up to these agreements will be that India will have to harmonise the classes for these marks, which will make it less complex and messy and more convenient for trademark owners to apply for trademark protection in India.
Shamnad Basheer, Founder, SpicyIP

Although India was not a signatory to these agreements until now, the Indian trademark law was already following the Nice Classification and the Vienna codification, Samta Mehra, a partner at Remfy & Sagar, said, adding that the Indian design law, also largely followed and was modelled along the lines of Locanro Classification system.

Having said that, an official accession would certainly be helpful in reducing the scope of ambiguity in due course. More importantly, such accessions go a long way in affirming the Indian government’s commitment towards fostering and strengthening the IP regime in the country. 
Samta Mehra, Partner, Remfry & Sagar

This is key to attracting foreign investment and promoting India’s interests, Mehra said.