Registration in General Territorial

The trademarks Act, 1999 which provides for international registration of marks, confers on the owner of the mark the exclusive right to use the registered trademark, in relation to the goods or services 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 owners 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 extends to the whole of India. Accordingly, the exclusive right to 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.

International Protection

international

With the expansion of international trade and commerce, the need for obtaining protection of trademarks not only in one’s own home country, but also in other countries has become increasingly important to commercial enterprises. Having regard to the practical difficulty in filing 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 the Madrid Protocol brings the members of contracting parties to the Madrid System 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 for filing applications in different languages of the countries. Again, after securing international registration under 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 member countries of 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 trademark under the Madrid System. The Madrid Agreement is in force since 1891. The Madrid protocol was adopted almost 100 year later in 1989 and which entered into force from April 1, 1996, introducing new features governing the system of international registration of marks, to remove practical difficulties of countries in according 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 the 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 registration of trademarks.

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 be the 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 the India’s accession to the Madrid Protocol. With the deposit of instrument of 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 enter into force 3 months thereafter, namely from 8 the July 2013. Proprietors of trademarks in India may then begin using the Madrid System to secure protection to their trademarks in one or more countries who are members of the protocol. In reciprocity, the trademarks owners in member countries of the protocol may seek protection to their marks in India.

Permitted Declarations or notifications

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 registration system in respect of the following 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.
  • Position regarding applicant’s intention to use the mark
  • Recording of licenses in international trademark 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, where according to the protocol, that no protection to international registration affected under the protocol before the date of entry into force of the protocol with respect of 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 1, 1996. The provision in Article 14(5) enables India, acceding to the Protocol now, to make a declaration that no protection to international 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. Necessary declaration to this effect has been made by India.

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 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 under Article 5(2) (b) of the protocol, an option is available wherein any contracting party ( a contacting state or organization of states being member of the Madrid Protocol) ,may make a declaration that the time 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. In addition, the declaration also explicitly maintains that a refusal of protection which results from an opposition may be notified after the expiry of the 18 month period. It was possible for India to make such declaration even after accession to the Protocol, in which case it would come into effect 3 months after its receipt by the Director General, WIPO. Since opposition and other proceedings before Registrar are quasi-judicial, entailing appeal to Appellate Board and superior courts, they cannot be subject to strict time limits for final disposal. Accordingly, the declarations made under Article 5(2)(b) and 5(2)(c) are important.

Provisional refusal subject to reconsideration by the Registrar

Provisional refusal of protection is implied in all cases where the registrar raises objection to the granting of protection to the trademark bases on an international registration. The objection may be based on one or more grounds under the Trademarks Act and trademarks Rules. It is important that all objections and grounds on which the provisional refusal is based must be indicated, together with a reference to the corresponding provisions of the law. Refusal communications, in an appropriate special form, shall state the relevant provisions of the law on which objections are based. The applicant is given opportunity to communicate his response to the Registrar’s ‘provisional refusal’ and the stated grounds of objections. The decision of the Registrar will then be communicated, after a hearing. All proceedings before the Registrar are quasi-judicial. Such a decision is subject to review in subsequent proceedings in the office on an application made to the Registrar under section 127(c), which enacts that “the Registrar may, on application made in the prescribed manner, review his own decision”. The Registrar’s decision taken, either before or after reconsideration or based on review is subject to appeal to the Appellate Board under section 91 of the Act. There is further option to the applicant to seek judicial review of the decision of the Appellate Board by way of filing writ petition before a High Court having jurisdiction.

Declaration of intention to use the mark

Under Rule 7 of the common Regulations when a party requires a declaration of the applicant regarding its intention to use the mark whenever that party is designated in the application, it has to notify that fact to the Director General. Where the contracting party requires the declaration to be signed by the applicant himself (that is, a signature by a representative is not sufficient), or to be made on a separate official form annexed to the international application, the notification should contain statements to that effect and should specify the exact wording of the required declaration. Further where the contracting party requires that the declaration is in a specified one of the three official languages (even where the international application is not in such language.  As far as India is concerned, in terms of section 18 of the Trademarks Act, 1999, an applicant for international registration of a trademark under the Madrid Protocol designating India shall declare that the mark is used or is proposed to be used by him in India. Such declaration shall be made in English by the applicant himself or by a person duly authorized in the prescribed manner under section 145.

Recording of licenses in International registration has no effect in India

Under Rule 20(6) of the Common Regulations the Director General that the recording of licenses in the international Register has no effect in that contracting party. While the Indian law recognizes the system of licensing of trademarks, the procedure for registration of such licensed users (called as registered users under Indian Law) is more elaborate. The procedure for recording of licenses as contemplated under Rule 20 of common regulations is different from the system of registration of trademark licenses in India through a scheme of registration of registered users, prescribed in section 49 of the Trademark Act, 1999 read with rule 68 of the Trademarks Rules, 2017. Accordingly, recording of licenses in the international register under the Madrid Protocol will have no automatic effect as far as India is concerned. Therefore due compliance of the provisions of the Indian law concerning registration of registered users is necessary. Notification to the Director General, WIPO, to this effect under Rule 20(6) has been made by India.

English as language of communication

Any notification concerning an application or registration, which is addressed by the International Bureau to an office, is normally in the language in which the international application was filed. However under Rule 6 of the Common Regulations an office may notify the International Bureau that it wishes to receive all notifications concerning international applications or registrations in English, in French or in Spanish, irrespective of the language in which the international applications was filed. In terms of the under mentioned new Rule 63 of the Trademarks Rules, 2017, English is to be the language for communication in respect of an international application originating from India or an international registration designating India. Accordingly, necessary notification may be made to the International Bureau in accordance with Article 6(2). Notification in this respect does not appear to have been made by India so far.

Fee Payment

The other notification related to: payment of fees in respect of international applications for registration under Madrid System. India may declare that, in connection with each international trademark registration in which it is mentioned and in connection with the renewal of such international registration, it wants to receive individual fee. India has made such a declaration, among several other countries.

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