Trademark Registration in General Territorial of India
The Trademarks Act, 1999 which provides for registration of trademarks, confers on the owner of the mark the exclusive right to use the registered trademark, in relation to the goods or service in respect of which it is registered and to obtain relief against any unauthorized use by others. In addition to this statutory right against infringement, the Act preserves the common law right of the owner of the trademark to obtain relief by an action for passing off. Competitors and rival traders are thus effectively prevented from using identical or confusingly similar marks for same or similar products. The law protects not only the interests of owners of marks, but also the public by the use of misleading and spurious marks on merchandise. Sub-section (2) of section 1 enacts that the Act‘extends to the whole of India’. Accordingly, the exclusive right of the registered proprietor does not extend beyond the territorial limits of India.The same is the position of registered trademarks in all countries, where the law is territorial. Each country has its own independent trademarks law.
With the expansion of international trade and commerce, the need for obtaining protection to trademarks not only in one’s home country, but also in other countries, has become increasingly important to commercial enterprises. Having regard to the practical difficulty in filing the applications for registration of trademarks in each country, having different laws, language and fee payment in different currencies, an international agreement gave birth to the Madrid Protocol administered by a specialized agency of the united nations, called the world intellectual property organization (WIPO). This protocol facilitates international registration of trademarks and provides a means for securing protection to such marks in one or more member countries under the Madrid system. India’s accession to Madrid Protocol for general territorial brings the Members of Contracting Parties to the Madrid Systems to 90. After registering the mark or filing an application for registration of the mark, in the office of origin, the owner of the mark has to file only one application in one language and pay fees to one office instead of going through the cumbersome procedure of filing applications in different languages of the countries concerned and paying fees in the currencies of the respective countries. Again, after securing international registration under the protocol, changes relating ownership of the mark, or concerning name or address, or those relating to goods or services may be effected by means of a single procedure through the international Bureau by payment of one fee, instead of multiple procedures separately in different countries. The recent amendment to the Trademarks Act, 1999, in India, has opened up the possibility for trademark owners in India to secure protection to their trademarks in various member countries of their choice, who are signatories to the Madrid Protocol. It is in the interest of a trademark owner to seek protection to his trademarks, if not in all the member countries of the protocol, at least in those countries where he has established or is proposing to establish business interests. In the case of owners of reputed or well-known trademarks, wider protection becomes more significant.
Introduction to Madrid System
The international Bureau of the World intellectual Property Organization (WIPO), Geneva, administers the system of international registration of trademarks under the Madrid system. The Madrid Agreement is in force since 1891. The Madrid Protocol for general territorial was adopted almost 100 years later in 1989 and which entered into force from April 1, 1996,introducing new features governing the system of international registration of trademarks, to remove practical difficulties of countries in acceding to the Madrid Agreement. However, both the Agreement and the protocol, together with Common Regulations, are in existence. These two separate treaties have member states, who are parties only to the Madrid Agreement, States and organizations party only to the protocol and state party to both Madrid Agreement and protocol. A country, which is a signatory to the Paris Convention, can accede to the Madrid agreement or Protocol. Similarly, an inter-governmental organization may become party to the protocol, if at least one of the member states of the organization is a party to the Paris Convention; and the organization has a regional office for the registration of marks – Article 14(1)(b).
Common office under Protocol
A common office is constituted,namely Benelux Trademarks Office, for registration of trademarks having effect in Belgium, Netherlands and Luxembourg. Accordingly, the Benelux Office will bet he office of origin in respect of these three countries and also the common office for serving the interests of trademark owners seeking protection to their marks in other member countries, under the Madrid Protocol.
India’s accession to Madrid Protocol
By virtue of being a party to the Paris Convention for Protection of Industrial Property, it is open to India to become a party to the Madrid System. The Trademarks Act, 1999, has been suitably amended by Parliament by Amendment Act of 2010 (40 of 2010), to enable India’s accession by the Government of India on 8th April, 2013,together with necessary declarations as are included in the Instrument, as notified by the Director General of WIPO, the Madrid protocol will necessary declarations as are included in the instrument, as notified by the Director General of WIPO,the Madrid Protocol will enter into force 3 months thereafter, namely from 8th July, 2013. Proprietors of trademarks in India may then begin using the Madrid system to secure protection to their trademarks is one or more countries who are members of the protocol. In reciprocity, trademark owners in member countries of the protocol may seek protection to their marks in India.
Permitted Declaration or notifications, while acceding to protocol by India
The Madrid Protocol and Regulations provide for the possibility for contracting parties, including India, to make certain declarations and notifications concerning the operation of the international trademark registration system in respect of the followings matters.
- As to the position of those already existing international registrations
- Time limit for refusal of protection – 12 months or 18 months?
- Provisional refusal subject to reconsideration by the Registrar, whether or not review is requested [Rule 17(5) (d)];
- Position regarding applicant’s intention to use the mark
- Recording of licenses in international registration – effect in India
- English, as language of communication
- Fee payment
Position of those already existing international registration
With respect to international registrations already existing, it is open to India to declare, when acceding to the protocol of particular territorial limits, that no protection to international registration affected under the protocol before the date of entry into force of the protocol with respect to India, can be extended to it. Such a declaration has to be made before acceding to the protocol and not later. Madrid protocol is in force from April, 1996. The provision in Article 14(5) enables India, acceding to the protocol now, to make a declaration that no protection to international trademark registration already affected under the protocol can be extended to it.Apparently, such an enabling clause is based on well accepted general principle that the law has prospective effect. At the same time, such a declaration maintains reciprocity.
Time-limit for refusal of protection
According to Article 5(2) (a) of the Madrid Protocol, any office shall notify its refusal of protection of an international registration of a trademark under the protocol within the period prescribed by the law applicable to that office and at the latest, before the expiry of one year from the date on which the notification of extension of protection is sent to that office by the International Bureau of WIPO. But er Article 5(2) (b) of the protocol, an option is available wherein any contacting party ( a contracting state or organization of states being member of the Madrid Protocol for general territorial) may make a declaration that the limit of one year is replaced by 18 months. With respect to an international registration in which India is designated under the protocol, the time limit for the Trademarks Registry to notify a refusal of protection has been duly declared as 18 months,instead of 12 months, by virtue of section 36E (2). The government of India has formally submitted a declaration to WIPO in compliance with the requirement in Article 5(2) (b) of the protocol.
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