Trademark registration in Cochin – Effect of International Registration is what we are going to be discussed here.
Where the international Bureau finds that the international application meets the applicable requirements, it registers the mark in the international register. Thereafter, it notifies the offices of the designated Contracting parties of the international trademark registration, informs the office of the origin and sends a certificate to the holder. The registration certificate will be sent to the holder through the office of origin and sends a certificate to the holder. The registration certificate will be sent to the holder through the office of the origin, where the office of origin has so desired. The certificate of registrations will be in the language of the international application. The international registration is published in the Gazette in Rule 32(1) (a). The reproduction of the mark is scanned from the application and published as it appears in the application.
Replacement of national registration by International registration
The provision in sub-section (6) of section 36 E adopts the corresponding provision in Article 4 bis of Madrid Protocol. According to these provisions, where there is a national registration in India and an international registration of the same mark, the national registration is deemed to be replaced by the international registration, in the following circumstances:
- Both the national and international registrations are in the bane of the same holder.
- The protection of international registration extends to India
- All the goods and services Listed in national registration in India are also listed in the international registration designating India for protection. The listed need not be identical, but those listed in the international registrations should not be narrower.
- The extension of the international registration to India takes effect after the date of national registration in India.
It is expressly clarified that the replacement is without prejudice to any rights acquired by the virtue of the earlier national registration in India, such as rights resulting from a priority claim or from prior use of the mark. Replacement does not mean that the national registration is suspended or otherwise affected. National registrations will remain on the register in India, with all rights attaching to such registration, so long as it is renewed by its holder. At the appropriate time, the right holder may choose not to renew the mark when due and allow it to lapse, when the trademark right under the international registration under manifest.
Upon request by the applicant, Registrar may make necessary entry in the register maintained under section 6 of the Act, about the international registration of the mark. The Register of trademarks maintained under section 6 of the act, about the international registration made in respect of the trademark constitutes public notice of the effect of Art.
Effect of international registration awaiting protection in India
Article 3 of the protocol states that the protection resulting from the international registration shall extend to any contracting party only at the request of the person who files the international application or who is the holder of the international registration. Article 3 makes provision in respect of request for ‘territorial extension’ made subsequently.
Sub-section (7) of section 36 E, which corresponds to the article 4(1) of the protocol, enacts that a holder of international registration of a trademark who designates India and who has not been extended protection in India shall have the same remedy which is available to any person making an application for the registration of a trademark under section 18 and which has not resulted in registration under section 23. In other words, the position in such case is that the eight to institute proceeding to prevent or to recover damages for, infringement of the trademark, without prejudice to the right to institute an action for passing off the goods or services as the goods of another person or the remedies in respect thereof. The rights will be the same as those available to the proprietor of an unregistered trademark under section 27 of the Act. The law thus recognizes that though no statutory right is available, the common law right of the trademark owner is protected for taking civil and criminal action for passing-off. Thus, the owner’s right of remedies, including injunction, are also duly protected. However, it is well known that the remedy in passing off action is cumbersome as compared to an infringement action.
Classification and scope of protection Article 4 of the protocol refers to the following two types of effects arising out of international registrations:
- The protection of the mark in the contracting country concerned shall be the same as if the mark had been deposited direct with the office of that country.
- If there is nil refusal to be notified to the International Bureau in accordance with Article 5(1) and (2) or if a refusal notified with respect of the specified Article has been withdrawn eventually, the protection of the mark in the country required shall, as from the specified date, be the same as if the mark had been registered by the office of that country. Whereas the first mentioned effect is contained in sub-section (7) of section 36 E the second element is reflected in sub-section (5) of section 36 E read with sub-section (1) of section 36F.Sub-section (2) of section 36F provides that ‘ the indication of classes of goods given by the applicant shall not bind the Registrar with regard to the determination of the scope of protection of the trademark. The NICE classification system, which is the international classification system, is followed by the registrar for registration of trademarks. Section 7 gives statutory force to the Registrar’s practice in this respect. According to the system the goods are classified in the classes 1 to 34 and services are grouped in classes are general indications relating to the areas to which the goods or services in principle belong. The goods and services listed and grouped in these 45 classes are illustrative and not exhaustive. They only provide a means by which the general content of the numbered international classes can be quickly identified. Hence, they have to be construed in accordance with the detailed international classification or alphabetical list of goods and services published by WIPO. It is obvious that the scope of statutory protection of a trademark is in respect of the goods and/or services as disclosed in the application. At the same time, ‘ the selection by the applicant of one or more class numbers in his application for registration cannot be totally ignored in deciding as a matter of construction of the application, what the application is for and whether it can be properly amended.
Section 36 F(2) is broad enough to cover cases where there is irregularity with respect to the classification of goods /services or in the indication of goods/services. Either the goods/services are wrongly classified by the applicant or the indication of any goods/services is too vague or incomprehensible for correct classification. The International bureau, after careful scrutiny, may notify the office of the origin and the applicant. The Bureau may either suggest a substitute term or the deletion of the term where the particular term is unclear.
On the question as to the class within any goods or services falls, section 7(2) enacts that the Registrar’s decision is final. The Registrar may publish an alphabetical index of classification. As and when new articles or materials come up, the Registrar will determine the correct class within which they are to be included. Wherever the question arises in the context international trademark registrations, the International Bureau which is responsible for ensuring uniformity of practice universally will ensure proper classification. Accordingly, in such cases the chances of interest classification would be extremely rare, except those happening on account of wrong or incorrect translations of the specification of goods/services from another language.
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