International applications originating from India:
Where an application for the registration of a trademark has been made under section 18 or a trademark has been registered under section 23, the applicant or the registered proprietor may make an international application on the form prescribed by the common regulations for international registration of the trademark.
A person who holds an international registration would make an international application on the form that is been prescribed by the common regulations for extension of the protection results from such registration to any other contracting party.
An international application under sub-section (1) or sub-section (2) shall designate the contracting parties where the protection resulting from the international registration is required.
The registrar shall certify in the prescribed manner that the particulars appearing in the international application correspond to the particulars appearing, at the time of certification, in the application under section 18 or the registration under section 23, and shall indicate the date and number of that application or the date and number of that registration as well as the date and number of the application from which the registration resulted, as the case may be, and shall within the prescribed period, forward the international application to the international bureau for registration, also indicating the date of the international application.
At any time before the expiry of a period of 5 years of an international registration whether it has been transferred to another person or not, the application under section 18 or the registration under section 23, as the case may be, been withdrawn or cancelled or has expired or finally refused in respect of all or some of the goods or services listed in the international registration, the protections results from such international registration may cease to have effect:
Provided that where an appeal is made against the decision of registration and an acting requesting for withdrawal of application or an opposition to the application has been initiated before the expiry of the period of five years of an international registration, any final decision resulting into withdrawal, cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of the international registration.
The registration shall, during the period of five years beginning with the date of international registration, transmit to the international bureau, every information referred to in sub-section (5).
The registrar would notify the international bureau, the cancellation which is to be effected to an international registration keeping in view the current status of the basic application or registration, as the case may be.
Section 36D lays down the manner in which the international applications originating from India shall be made by the applicant and processed by the trademarks registry.
Sub-section (1) enacts that “where an application for registration of a trademark has been made under section 18 or a trademark has been registered under section 23, the applicant or the registered proprietor may make an international application on the form prescribed by the common regulations for international registration of that trademark.
The above provision incorporates the fundamental requirements of the Madrid protocol. They are:
- The applicant for international registration must have a basic trademark application or basic registration of the trademark in the office of origin who is one of the member countries of the protocol.
- The international application shall be filed with the international bureau through the intermediary of the office with which the basic application was filed or by which the basic registration was made in such office or origin.
Section 5 of the trademarks act provides for the establishment of a trademarks registry. For the purpose of facilitating registration of trademarks, branch offices have been established at Chennai, Ahmedabad, Delhi, Kolkata, besides the head office in India, for purpose of article 2(2) of the protocol, the trademarks registry in India, as notified under section 36C, is the office of origin. In this context, reference may be made to section 2(2) of the act, which enacts that any reference to any office of the trademarks registry. The name of the country or state is the office of origin. That being so, doubtless, the office of origin cannot be the name of the appropriate office, but the name of the country, further, there can be the only office of origin for India.
The international application shall relate only to the same trademark and the goods and services covered by the basic application or registration, as the case may be.
The application shall be made in the form prescribed by the common regulations for international registration, designating one or more member countries of the protocol where protection of the trademark is sought.
Applications originating from India-Procedure for making:
- International application originating from India, or any communication relating thereto in accordance with the common regulations shall be filed electronically through the new “Trademarks international application system”.
- It is explicit from sub-section (1) of section 36D that for an international application, the existence of a basic application for registration of a trademark filed under section 18 or basic registration of the trademark obtained under section 23, is an external pre-requisite.
- The international application must, therefore, be based either on an application for registration filed with the trademarks registry under section 18 or registration of the trademark obtained under section 23 of the trademarks act. Equally, it may be based on several application or registrations or a combination thereof. Such international application will have to be filed and processed only in the office notified under section 36C. The general law as to appropriate office as contained in sub-section (3) of section 5 will not apply.
- Three different official forms exist for presenting an international application under the common regulations. Since India’s accession is only to the protocol in the Madrid system, the prescribed application, which is exclusively governed by the protocol, is from MM2. The same may be obtained from the trademarks registry, or downloaded from the official WIPO website. Section 36D (1) mandates that the international application is to be made on the form prescribed by the common regulations for international registration.
- The contents of the application shall conform to those prescribed in rule 9 to common regulations.
- Where an international application is based on an application made and pending under section 18, the date and number of that application must be indicated. In the case of basic registration secured under section 23, the date and number of that register, as well as the date and number of the application from which the basic registration resulted, ted should be given. It may be noted that under section 23(1), the registered trademark will be registered as the date of making with the said application and that date will be subjected to the provision of section 154, which will be deemed to the date of registration. Under section 154, however, where a trademark is registered on the basis of priority right based on a convention application, it is registered as of the date on which the application was made in the convention country and in such case that date shall be deemed to be the date of registration.
- The international application shall indicate the goods and services in respect of which protection of the mark is claimed and also indicate the class or classes of the international classification in which such goods/services fall. If the applicant claims color as a distinctive feature of the mark, he shall so state and attach a color representation of the mark, in addition to the black and white representation.
- The international registration will extend to the contracting parties expressly designated by the applicant in the international application. A request for territorial extension may also be made subsequently, an on form prescribed by the common regulations.
- Office of origin should not be designated the in the international application or subsequently.
- Priority right claim is permissible under Art.4 of the Paris convention.
- The representation of the mark shall be no longer than 8cm×8cm and must be affixed in the box of the form. Besides, the application shall contain all particulars, as specified in rule 9 of the common regulations and bear the signature of the applicant and the office of origin by way of endorsement. Where the mark is a three-dimensional mark or a sound mar, the reproduction of the mark shall correspond exactly with the graphical representation of the mark appearing in the basic application or basic registration.
- Two or more applicants may jointly file an international application governed exclusively by the protocol, if the basic application was jointly filed by them or the basic registration is jointly owned by them (as per section 24 of the act), and if each of them qualifies, in relation to the contracting party whose office is the office of origin for filing the application under article 2(1) of the protocol.
- The applicable fees shall be payable.
- There is no provision for registration an of a series mark under the Madrid protocol. Accordingly, where the basic application or basic registration in India is in respect of series mark under section 15, as per office practice in the U.K., the applicant should either file separate application for each of the series marks or choose one of the marks in the series to be the basis of the international registration.
Certification by the registrar:
- Where an international application is filed under section 36D for transmission to the international bureau of WIPO, Geneva, the trademarks registry, India, shall have to scrutinize the same with reference to the requirements specified in rule 9 of the common regulations, including those in respect of the following matters in the application on form MM2(E).
- Filing date of the application: This is the date on which the office of origin received the request to certify and forward the international application to WIPO. Duly certified and counter signed, the application is to be forwarded within 2 months if it is to retain the date of receipt in the office of origin as the filing date.
- The name of the applicant in the application should be the same as given in the basic application or basic registration.
- The mark is the same as found in the basic application or basic registration, as the case may be. If colour is claimed in the basic mark, the international application shall also be likewise in color.
- The goods/services in the application correspond to those given in the basic application or basic registration. In any case, it shall not be wider than those covered by the basic mark.
If, for any reason beyond its control, the office of origin is not able to forward the case to the WIPO within the 2 month period, the annual date on which the application is eventually received by WIPO will be taken to be the filing date.
Sub-rule (3) of rule 66 of trademarks, rules, 2017 provides that: If an international application doesn’t meet any requirements, the registrar would not forward it to the international bureau and requires the applicant by notice to comply with the requirements which are specified therein and can forward the application only after such compliance within that period specified in the notice.
In order to secure the filing date, it is necessary to ensure that the process of certification is completed and the application is forwarded within the stipulated 2 months period. It is, therefore, in the interest of the applicant to see that the application meets all the stipulated requirements.
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