Legal Provisions giving effect to Madrid Protocol

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After passing of the 2010 Amendment Act, the government had been making an effect to reduce the period of Trademark Registration in trademark registration offices of the country after filing of an application. The understanding was that, when the trademark office shall become capable to deliver or deny the registration within 15-18 days, the  Amendment Act of 2010 to introduce international registrations in India would be commenced. The applications for international registrations under Madrid Protocol have now commenced from July 8, 2013, when the Trademarks (Amendment) Act, 2010 and Trademark Amendment Rules, 2013 have both been enforced. Meaning of “International application” was seen above while discussing Madrid System/Protocol and has also been defined in section 36 B(h) of the 1999 act. It means an application for international trademark Registration or for the extension of the protection resulting from an international trademark registration to any Contracting party made under the Madrid Protocol.

Protection & International Trademark registration under Madrid Protocol

The Trademarks Act, 1999 after the commencement of the Amendment Act of  2010, enables applicants in India to make a single International application for registration of their trademark across numerous countries who are members of the Madrid Protocol and which grant trademark protection in their jurisdictions through the Madrid System.  India has commenced granting trademark protection through Madrid System was established from July 8, 2013. Similarly, the applicants from all member countries can apply for international trademark registration designating India for protection or can enlarge the scope of protection to India.

Madrid System for the International Trademark Registration

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The Madrid system functions under the Madrid agreement (1891) and the Madrid Protocol (1989). Both the agreement and the protocol are administrated by the International Bureau of the World Intellectual Property  Organisation (WIPO) located in Geneva, Switzerland. The system enables the Registration of Trademarks in multiple jurisdictions worldwide that are part of Madrid union’s member’s countries by filing a single application in the applicant’s national Trademark office, or in the International Bureau of WIPO. Applicants are normally made online to both International Bureau and/or Indian Registry trademark.

Application in India

Thus, any person, natural or legal, who is domiciled in India or is a national of India or which has  a real and effective industrial or commercial establishment in India or which has a real and effective industrial or commercial establishment in India can get their registered trademarks or their pending applications for trademark registration registered under the Madrid Protocol by way of an online application. The office of the Controller General Patents, Designs and Trademarks has issued a public notice stating that a gateway for making such an online application has been made available on the official website www.ipindia.nic.in. The public notice also provides a contract ID to direct queries about the Madrid protocol to Madrid.tmr@nic.in.

Meaning of Earlier trademark under section 11 expanded

For giving effect to the International trademark registration under Madrid Protocol, the following provisions have been added or amended in the definition of ‘earlier trademark’ –

  • a registration application under section 18 having an earlier date of filing, or
  • an international trademark registration referred to in section 36 E.

Before the above amendment the ‘earlier trademark‘ consisted of the following:

  • a registered trademark, or
  • convention application referred to in section 154 which has a date of application earlier than that of the trademark in question,

taking into account, where appropriate, of the priorities, claimed in respect of the trademarks.

Opposition to Trademark registration

As seen in Chapter 11 in Trademark Registration procedure, the power to oppose the registration under section 21 wherein a period of three months extendable by one month was provided for the opposition has been substituted within a fixed period of four months without any power of the Registrar to extend this period to enforce the Madrid System. The section 21(1) now after the commencement of the 2010 Act in 2013 would read as under:

Any person may, within four months from the date of the advertisement or re-advertisement of an application for trademark registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the Trademark registration.

Trademark to be Registered within 18 months

The 1999 Act after 2010 amendment has come into force on July 8, 2013, mandates a trademark to be registered within a fixed period of 18 months to comply with the time periods as specified in International Phase and National phase as stated in section 36 E(5). It will be applicable both to protocol applications as also ordinary applications.

Applicants Requirements

A Madrid application can be filed by a person including a natural person who is a citizen of, or is domiciled in, or has a real and effective industrial or commercial establishment in, that contracting state or in a state which is a member of that contracting organization, as the case may be. The section 36B assigns the meaning to ‘contracting organization’, ‘contracting party’ and ‘contracting state’ as follows, which reads:

  • Contracting organization means a contracting party that is an intergovernmental organization;
  • Contracting Party means a contracting state or contracting organization party to the Madrid Protocol;
  • Contracting state means a country party to the Madrid Protocol;

The Madrid Protocol allows applicants to choose from among the Contracting parties and thus the exact countries in which the applicant seeks protection can be specified.

Applicability of the Madrid system in India

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The Union Government ratified India’s accession to the Madrid Protocol on 8th February 2007 and deposited its instruments on 8th April 2013. A major change is introduced in section 23(1) whereby the Trademark  Registration process for an application of trademark is to be completed in a time bound manner  ” within eighteen months of the filing of the application”. This single change shall introduce a new culture and every aspect of the Trademark Registration process in the trademark registry will need to change in India, forcing deadlines at every stage of application. This was the reason for not satisfying the 2010 Act till July 8, 2013, but accepting the opposition as a ground for accepting the delay under section 36 E (5), it may allow more time to change the ground position of completing the trademark registration within 18 months.

Registration procedure as Supplemented by the Trademark Rules

The Protocol has been implemented by the insertion of a new chapter 4A in the 1999 Act for accepting international applications and provides a mechanism for granting registration under the Madrid protocol. Section 36 B (j) tells the meaning of International trademark registration which means: the registration of a trademark in the register of the International Bureau effected under the Madrid protocol; The mechanism has also been achieved by making amendment of Trademark Rules, 2002.

Procedure for an International Application

An applicant may make an international application on the forms prescribed by the Common Regulations for International Trademark Registration, The knowledge of provisions of Madrid Protocol, appreciation of “common Regulations”, and  Administrative Instructions for administering protocol is most important for taking benefit under International Trademark Registration. Rule 67 M puts the Madrid Protocol, “Common Regulations “, and administrative instructions on the statutory footing by referential legislation. The protocol and Common regulations are reproduced in the Appendix.

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Further, a person holding an international Trademark Registration may make an international application on the form prescribed by the common regulations for extension of the protection resulting from such Trademark registration to any other contracting party. The applicant has to select and designate the countries from the list of the member countries where he seeks protection resulting from the international registration of his trademark. The Registrar in India (and Trademark Offices in other countries) has to forward the international application to the International Bureau for Trademark registration and also indicating the date of the international application. “International Bureau” means the International Bureau of the World Intellectual Property Organisation.

Issue of Notices or communications and response

Rule 67 C provides that any notice or communication relating to both an international application under section 36 D and international trademark registration where India has been designated under section 36 E, shall be issued by the Registrar only in electronic form, and any response thereto shall also be received likewise. This would require a lot of re-training of the manpower with the trademark office as also recruitment of trained trademark professionals.

International application in respect of which India is the country of Origin

Rule 67 D stipulates that an 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. Rule 67 E provides :

  • Where an International application is filed under section 36 D for transmission to the International Bureau, the Registrar shall certify the contents of the application in Form MM 2 (E) as provided by international Bureau subject to the payment of fees as specified in Entry No. 88 of the First schedule of Trademarks Rules, 2002 as amended in 2013.
  • Where the international application complies with the requirements, the Registrar shall so certify in the International Trademark Application indicating also the date on which the said international application 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 Trademark Application does not meet the requirements, the Registrar shall not forward it to the International Bureau and shall require the applicant by notice to comply with the requirements as specified therein, and shall forward the International application only after such compliance with the period specified in the notice.

Dependence for International Trademark Registration

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It has been explained that international Trademark registration for the first five years is dependent upon home country application or registration and if that becomes invalidated, the international Trademark registration also ceases to have the effect. Section 36 D (5) together with provision states this rule for Indian applications. Rule 67-1 provides for such an eventuality. It enjoys the Registrar to notify the International Bureau accordingly. Section 36 E(8) enacts the same rule for international applications originating abroad if they happen to face the handicap as their basic applications/ registrations become invalidated in their home countries. Rule 67 J states the provision of article 9 of the protocol shall apply to such international trademark registration in so far as it designates India. There is no central attack on international registration after the lapse of five years. The Registrar is duty bound during the period of five years beginning with the date of international registration to transmit to the International Bureau every information referred to in subsection 36 D(5). The Registrar has to notify the International Bureau the cancellation to be effected to an international registration keeping in view the current status of the basic application or the basic registration, as the case may be.

Fees for international Registration and Designation Fee

The application form can be filed In English, French, Spanish but India has prescribed in Rule 67 B English as the only language in which it would receive communications. The filing application is subject to the Madrid protocol as the :

  • Payment of basic fee;
  • Complementary fee for each designated contracting party (member country) and
  • a supplementary fee for each class of goods and services.

The fee may be payable to WIPO directly or to the office of Origin (Indian Trademarks Registry) , which is permitted to a handling fee.

Handling Fee

A Handling fee as specified first schedule shall be payable to the Registrar for certification and transmittal of the international application to the International Bureau and such fee shall be paid in Indian rupees electronically along with the application.

Scrutiny of Basic Application

The offices of origin i.e., the designated branch office of Registry in India shall examine, whether the international application corresponds to the mandatory basic trademark application or basic registration and it should also comply with the home state (India) requirements for registration. The meaning of Basic trademark registration.

Certificate:

The office of the origin has to certify that under Article 3(1) of the protocol the mark which is the subject matter of the international application is the same mark as the one in the basic registration or basic application as referred above. It has also to certify the initial date on which the office has received the request to present international application. The initial date will be the date of the international trademark registration.

Examination at International Bureau:

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The International Bureau will examine that the International application complies with the requirements of:

  • The Madrid Agreement or protocol,
  • Common regulations concerning the implementation of the protocol,
  • The indication of goods and services and their classification,
  • required fee payment, and
  • other basic administrative requirements.

Removing irregularities

The next step is the International Bureau shall inform the office of origin (Indian Trademark registry) and the applicant of any irregularities. On the receipt of such information the same must be removed by the applicant within three months, otherwise, the application will be considered as abandoned.

Recording in International Register

On successful examination, the International Bureau will then record the mark in the international register and shall publish the mark in the Gazette, and notify each contracting party or Member country which are the designated countries listed in the application. The International Bureau will ask for their consequent approval of designated countries and grant of the trademark registration by the respective countries for their territories.

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