Definitions of MADRID Protocol
For the purpose of trademark protection , unless the context otherwise requires
- ‘Article’ means article referred to in Madrid Protocol;
- ‘Electronic form” shall have the meaning as is assigned to it in Clause(r) of sub-section (1) of section 2 of the Information Technology Act,2000(21 of 2000);
Words and expressions used in these rules, in the context of international application or international trademark registration for protection of Trademarks under Chapter 4 A of the Act, but not defined shall have the same meaning respectively assigned to them in the Madrid Protocol or the Common Regulations.
An international application or any communication relating thereto for transmission to International Bureau or any advice by way of notification of extension of protection to India resulting from the International registration shall be in English.
Issue of notices or communications etc., and response thereto
Any notice or communication relating to both an international application for protection of trademarks under section 36D and international trademark registration where India has been designated ,under section 36E,shall be issued by the Registrar only in electronic form ,and any response thereto shall also be received likewise.
International application for protection of trademarks in respect of which India is the country of origin
International application originating from India,or any communication relating thereto in accordance with the Common regulations shall be filed electronically through the Trademarks international Application System. Many companies of India,broadening their business into many countries often analyzing the value of registering their trademarks once it is too late, that is, once they are faced with copying/imitators or once they are accused of infringing the rights of others. The risks of doing so are very high and the repercussion may be costly and detrimental to a company’s entire business and export strategy. It can be a serious financial liability to invest in a brand, promote it in the local market, then find that the brand cannot be registered and used internationally and have to finally abandon that investment.
Verification and Certification of international application for protection in which India is the country of origin
Where an international application is filed under section 36D for transmission through the International Bureau, the Registrar shall certify the contends of the application in Form MM2(E) as provided by International Bureau subject to the payment of fees as specified in Entry No.88 of the First Schedule.Where the international application for the protection of trademarks complies with the requirements,the Registrar shall so certify in the international application indicating also the date on which the said international application for protection of trademarks was received;and shall forward the same to the International Bureau,within two months from the date of receipt of the said application.Where the international application does not meet the requirements during the trademark registration,the Registrar shall not forward it to the International Bureau,and shall require the applicant by notice to comply with the requirement as specified therein,and shall forward the international application for the protection of trademarks only after such compliance within the period specified in the notice.
Handling fee for the protection of Trademark
A handling fee as specified in First Schedule shall be payable to the Registrar for certification and transmittal of international application to the International Bureau and such fee shall be paid in Indian rupees electronically along with the application. The applicant paid direct to the International Bureau although, in some cases, the Office of origin may be organised to collect and forward them.In addition, the Office of origin may charge a handling fee for forwarding the international application to the International Bureau.
Manner of keeping the record of international registrations where India has been designated
On receipt of the advice from the International Bureau about an international application designating India and notification about the extension of protection resulting from such international Trademark Registration of protection of trademarks,the Registrar shall enter all particulars thereof electronically in a record called the ‘Record of particulars of International Registration’.Any change in the particulars as and when received from the International Bureau shall be entered in the said record.Any entry made in such record shall ,to the extend that it applies to India as a designated contracting party,have the same effect as if it had been recorded by the Registrar in the Register of trademarks.
Examination of application for protection under section 36E
- The advice referred to in rule 67G shall be examined originally within two months from the date of receipt of such advice.
- Where the Registrar finds that the trademark which is the subject of an international registration designating India,cannot be protected ,he shall, before the expiry of refusal period applicable under article 5 of the Madrid protocol,notify to the International Bureau a provisional refusal for protection.
- Where there are no grounds for refusal to grant protection,the Registrar shall advertised the particulars concerning international registration under section 20 of the Act in a separate part of the Trademark Journal ordinarily within a period of six months from the date of receipt of advice.
- Where an opposition is filed under section 21 of the Act,the Registrar shall,notify that fact to the International Bureau as a provisional refusal based on the opposition in accordance with the Protocol and Common Regulation.
- The international Registration,on receipt of an opposition thereto,shall be processed in accordance with the provisions contained in Rules 47 to 57 of the Trade Marks Rules,2002.Where the procedure mentioned under sub-rules (1) to (5) have been completed with and the Registrar has decided to conform such refusal of protection of the trademark all the goods or services for which the protection has been requested,the Registrar shall send to the International Bureau a statement to that effect.
- Where.the provisional refusal has been either totally or partially withdrawn the Registrar shall send to the International Bureau(a) a statement to the effect that the provision refusal is withdrawn and the protection of the trademark is granted for all the goods or services for which the protection has been requested; or a statement indicating conditions,or limitations subject to which,and the goods or services in respect of which the protection is granted.
- where there is no ground to refuse protection,the Registrar shall notify the International Bureau to the effect that protection is granted to the mark in India.
- Where there is further decision affecting the protection of trademark in India,the Registrar shall,send the further statement to the international Bureau to that effect.
Invalidation of protection
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 an International Trademark Registration is cancelled at the request of the office of the origin country,the provisions of article 9 of the Madrid protocol shall apply to such international registration in so far as it designates India.
Collective and Certification Marks
Where an international registration designating India is in respect of a collective mark or a certification mark ,the regulations governing the use of such collective mark or certification mark shall be submitted directly ,by the holder of that international trademark registration to the registrar within the period of one month from the date of advice by the International Bureau.
Replacements of national Trademark registration
where an international Registration is deemed to replace the registration held in India under sub-section (6) of section 36E of the Act,the Registrar shall,upon the request of the holder of International Registration take note of the international trademark registration and make necessary entry in the Registrar maintained under sub-section (1) of section 6 of the Act.Thereafter,the registrar shall notify the International Bureau accordingly under rule 21 of the Common Regulations.The Rule 67M subject to provisions of the Act,the provisions of the Madrid Protocol for trademarks protection,common Regulations and Administrative Instructions shall apply in relation to international applications of trademark protection,originating from India and international registrations where India has been designate.
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