Introduction to International registration

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Where  the international Bureau finds that the concept of international application meets the applicable requirements, it registers the trademark in the international register. Thereafter it notifies the offices of the designated contracting parties  of the international trademark registration, informs the office of the origin and sends a certificate to the holder. The registration certificates will be sent to the holder through the office of the origin, where the office of the origin has so desired. The certificate of trademark registration will be in the language of the International application. The international registration  is published in the Gazette in Rule 32(1) (a). The reproduction of the mark is scanned from the Trademark application and published as it appears in the application.

Concept of International Registration

The concept of international trademark registration will be as per rule 14(1), and will include all the data contained in the international trademark application;  the date and number of international registration, etc., international Trademark registration resulting from an international application governed exclusively by the protocol, will be recorded and published in English, French and Spanish.

Concept of Extension of Protection

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Sub-section (2) of section 36 D provides that ‘a person holding an international trademark registration may  make an international application on the form prescribed by the common regulations for the extension of the protection to any other contracting party’. In this connection, Article 3 of the protocol, read with rule 24, provides for ‘request for territorial Extension’. If  an international  registration does not extend to  a contracting party, the extension of protection to that contracting party may be effected by filing  a subsequent designation. A sub-sequent designation may be made for part only of the goods and services recorded in the international register. A  given Contracting party may therefore be the subject of several subsequent designation, each referring to a different part of the list of goods and services recorded in the international register. Presentation of subsequent designation  and the effect thereof governed by the Rule 24. The subsequent designation is not for a new for a new international mark or its trademark registration. It is just the concept to obtain the protection for an already existing international mark in certain other new companies, where the protection was not applied for earlier.

Irregular subsequent designation

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This is also important area where the right holder will have to ensure that subsequent designation comply with the all the requirements prescribed in the common regulations. Where the subsequent designation contains an irregularity which relates to the number of the international trademark registration concerned , the indication of the Contracting Parties designated, the indication of the list of goods or services or any declaration of the intention to use to be annexed to subsequent designation, the date of the subsequent designation will be the date on which the irregularity is remedied. Where however the subsequent designation was presented to the International Bureau by an office, the date of the subsequent designation will not be affected by any of the irregularities. Any other irregularity does not affect the date of the subsequent designation. If the irregularity is not remedied  within three months from the date of the notification by the International Bureau, the subsequent designation will be considered abandoned. In particular, where the irregularity lies in the fact that a concept of intention to use the mark is missing or defective and such irregularity is not remedied within the prescribed period of three months, it should be noted that the entire concept of subsequent designation will not be considered abandoned-that is, with respect to all the contracting parties which have been designated subsequently. The Rules do not specify who should remedy the irregularity. If the holder presented the subsequent designation directly to the International Bureau, then clearly he has to remedy the irregularity. An exception to the general rule relating to irregularities is made in the case where the International Bureau considers that the holder is not entitled to make the subsequent designation with respect to some or all of the Contracting parties mentioned. Where the lack of entitlement applies to only some of the contracting parties mentioned. Where the lack of entitlement applies to only some of the contracting parties mentioned, the subsequent designation will be deemed not to contain the designation of those contracting parties; the respective complementary or individual fees paid in respect of them will be refunded. Where the deficiency applies to all the contracting parties mentioned, the subsequent designation is considered to be abandoned. In addition to all the complementary and individual fees, the concept international bureau  will also reimburse one half of the basic fee.

Concept of correction in International Register and possible consequence

Where an error in the  international register has been corrected, either ex offico or at the request of the holder or of an office, the International Bureau notifies the holder and, at the same time, the offices of the designated contracting parties. The correction is also published in the Gazette (Rule 28(2)). Any office so notified about the correction may notify the International Bureau that the protection cannot, or can no longer, be granted to the international registration as corrected. This may be done where there are grounds for refusal of the international registration as corrected which did not apply to the international trademark registration as originally notified the office concerned. Article 5 of the Protocol and Rules 16 to 18 apply to the notification of the refusal of the effects of correction and in particular to the time limits for notifying such refusal. The time limit is counted from the date of sending the notification of correction to the office concerned. Rule 28(3).

Dependency on Basic mark

Sub-section (5) of section 36 D incorporates and gives effect to Article 6(3) of the Protocol, which provides that for a period of 5 years from the date of an international registration, protection resulting from the concept of the international trademark registration is, therefore, dependent on the basic application or basic registration in the office of origin.

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International application may be made based on one or more trademark application or registrations in the country of origin, vide section 36D(1). The protection resulting from international registration is, therefore, dependent on the basic application or basic registration in India, which is the country of origin. Consequently, the protection resulting from the international registration may no longer be invoked if, or to the extent that, the basic registration, or the registration resulting from the basic application, is cancelled, renounced, rectified or has lapsed, or if the basic application is the subject of a final decision of refusal or is withdrawn, either within that 5 years period or as a concept or result of an action commenced within that period.

Concept of Central Attack

The protection resulting from the concept of international trademark registration can be destabilized in either of the following  manner, namely-

If the 5 year dependency period is not over, it may be possible to attack the basic application ( if the mark is still not registered) in opposition proceedings or the basic registration through rectification proceedings.

By filing opposition or any other appropriate proceedings in the designated countries according to the concept  (law) of each country, where protection to the trademark resulting from the international registration subsists.

In The first case, if the basic application fails or the basic registration is cancelled as a result of central attack., the international registration which is founded on the basic of trademark will have to be considered and also  cancelled. Consequently, the protection of the mark arising out of the international registration in the other contracting states will also meet the same fact.

In the second case, if the proceedings is one or more countries is successful, the protection to the mark will be cancelled only in such country/countries. It will not have any adverse effect on the international registration or protection to the mark in other designated member countries.

Whether such registration is transferred to another person

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Sub-section (5) enacts ‘whether such registration has been transferred to another person or not’, the protection resulting from such international registration shall cease to have effect if the basic application is withdraw or refused or the basic trademark registration is cancelled etc.,  the protection resulting from international registration cannot be invoked.

It is expressly enacted in provision to sub-section(5) of section 36D that the same concept followed and the same result will apply-

  • Where an appeal is made against the concept and decision of the registration;
  • An action requesting for withdrawal of application or an opposition to the application has been initiated before the expiry of the period of 5 years of the international trademark registration.

If, as indicated above, an action had commenced or had been initiated before the expiry of the period of 5 years of an international registration, the 5 year time limit has no effect in regard to the final decision. This provision corresponds to Article 6(3) of the protocol. What is crucial is that action should have been commenced before the expiry of 5 years. In such cases, even if the final decision comes after the 5 years period, it will be deemed to have taken place before the expiry of 5 years of the international registration.

Registrar to apprise WIPO of status

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The   basic application filed under Section 18 may be protection ex officio by the Registrar either on absolute grounds for refusal under section 9 or on relative grounds specified in section 11 or any of the grounds under the Trademarks Act or Rules. The refusal may be total or partial. Even after the Registrar accepts the applications, after the advertisement of the mark in the Trade Marks Journal, refusal may arise out of an opposition by the third party. Similarly, the basic registration on which the international  trademark registration is found under the protocol may become subject to rectification or cancellation proceedings. In all these cases, the Registrar is required under sub-section(6) of section 36 D to keep the international Bureau of WIPO apprised of the status of the basic application or basic registration, as the case may be.When the concept or basic application is refused or basic registration is cancelled and the decision in this respect becomes final and no longer subject to review or appeal, the office of the origin has to request the International Bureau to cancel the international registration , either totally or partially [Sub-section (7) of Section 36 D]. Where the protection resulting from an international registration has ceased to have effect, or varied, in India,  as a result of legal proceedings under the Act, the Registrar shall notify the International Bureau accordingly. Where the basic application or the basic registration has ceased to have effect within the 5 year period, the procedure for sending notification by the office of origin to the International Bureau is prescribed in Rule 22 of Common regulations. The notification shall indicate,

  • the number of international trademark registration
  • the name of the folder
  • the facts and decisions affecting basic registration or basic application, as the case may be, and the effective date of those facts and decisions. Where the said facts and decisions affect the international registration only with respect to some of the goods or services, those goods or services which are affected by the facts and decisions or those which are not affected by the facts and decisions.
  • Basic application is refused ex officio before 5 year period, or such refusal has become final, after that period; or basic application refused as a result of opposition begun before 5 year period, etc.,
  • Basic application is withdrawn on request before 5 years
  • Basic application has been abandoned or deemed to be abandoned before 5 year period. Similarly basic registration cancelled either on owner’s request or by a third party initiative before 5 years, even where decision becomes final after 5 years; registration lapsed for non payment of renewal fee before the expiry of 5 year period, even where final decision is taken after 5 year period.

Any cancellation of international trademark registration will be published and recorded, indicating the date of cancellation. If the notification from the office of origin does not comply with requirements, the International Bureau will not record the ceasing of effect and inform the office to that effect, until the notification is put in order.

Cancellation of international registration at the request of office of origin

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When an international trademark registration is cancelled at the request of office of origin, the provisions of Article 9 shall apply to such international registration. Article 9 provides that when the international registration is cancelled at the request of office of origin, the holder of international trademark registration may file an application for the registration of the same mark with the office of any of the Contracting Parties of which the international registration had effect. Such application shall be treated as if it had been filed on the date of the international registration or on the date of recordal of territorial extension. The holder will also get the benefit of any priority claimed in the international Trademark registration. The only conditions are:

  • The application should be filed within 3 months from the date of cancellation of international registration.
  • The goods/services listed in the application should have been covered by the cancelled international registration in respect of the contracting party.
  • Such application complies with all the requirements of the applicable national law, including payment of fees.

This is a special provision for the benefit of the right holder and is aimed at softening the consequences of 5 year dependency feature of the Madrid Protocol.

 

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