International registration of trademarks under the Madrid Protocol
Provisions relates to the trademarks through an international registration under the Madrid protocol:
Application of act in case of international registration which is under the Madrid protocol. The provisions may apply to international applications and registrations under the Madrid protocol.
36 B: Definition:
- Application which in relation to the contracting state or organisation means an application that is made by a person who is a citizen of or domiciled in or has a real and an effective commercial or industrial establishments in, that contracting state or a state which is a member of the contracting organisation, as the case may be.
- Explanation: For the purposes of this clause, real and an effective commercial and industrial establishment means and includes any establishment where bonafide commercial or industrial activity takes place and would not necessarily be the principal place of business;
- Under section 18, the application for the registration of a trademark is the basic application and that actually acts as a basis for applying for an international registration;
- Under section 23, basic registration means the registration of the trademark and that is used as a basis for applying for international registration;
- Common regulations referred as the regulation which concerns about the implementation of the Madrid protocol;
- Contracting organisation means a contracting party which is an inter-governmental organisation;
- Contracting party is the one which means a contracting state or organisation party to the Madrid protocol;
- Contracting state means a country party to the Madrid protocol;
- An international application means an application for international registration or for extension of the protection which results from an international registration to any contracting party which has been made under the Madrid protocol;
- International Bureau, which means the international bureau of the world intellectual property organization;
- International registration refers to the registration of a trademark in the register of the international bureau which has been effected under the Madrid protocol;
- Madrid agreement means the agreement which concerns the international registration of marks that has been adopted at Madrid on the 14th day of April 1891, as subsequently revised and amended;
- Madrid protocol means the protocol which relates to the Madrid agreement that concerns the international registration of marks adopted at Madrid on the month of June, 27, in 1989, as amended from time to time.
36 C. when international application deals by trademark registry:
- In spite of anything which contains in sub-section (3) of section 5, an international application may be dealt with by the head office of the trademarks registry or such branch office of the registry, as the central government may, by the notification in the official gazette, specify.
36 D: International application which originates from India:
- An application for the registration of a trademark made under the section 18 or a trademark has been registered under section 23, the applicant or the registered proprietor can make a an international application on the form which has been prescribed by common regulations for international registration of that trademark.
- A person who holds an international registration may make an international application on the form which has been prescribed by the common regulations for extension of the protection results from such registration to any other contracting party.
- Under section (1) or sub-section (2), an international application shall designate the contracting parties where the protection results from the international registration are required.
- In the prescribed manner, the registrar shall certify that the particulars appearing in the international application which corresponds to the particulars appears at the time of certification, in the application under section 18 or per section 23, may indicate the date and number of that application or registration as well as the date and number of the application from which that registration resulted, as the case may be. It should be within the prescribed period and forward the international application to the international bureau for registration, also indicates the date of the international application.
- If at any time before the expiry of a duration of five years of the international registration, whether that such registration been transferred to another person or not, the application which has been under the section 18 or the registration under the section 23, as the case may be, been withdrawn or cancelled or has been expired or been finally refused in respect of all or some of the services or goods listed in the international registration, the protection results from such international registration may cease to have effect:
If an appeal is made against the decision of registration and an action requests for withdrawal of application or an opposition to the application have been initiated before the expiry of a period of five years of an international registration, final decision may result into cancellation, withdrawal, expiration or refusal shall be deemed to have taken place before the expiry of five years of international registration.
The registrar during a period of five years begins with the date of international registration may transmit to the international bureau of every information referred in sub-section (5).
The registrar can notify the international bureau of the cancellation to be effected to an international registration keeping in view, the current status of the basic application or registration, as the case may be.
36 E. International registration where India has been designated –
- The registrar, after the receipt of an advice from the international bureau of any international registration where India has been designated, particulars need to be kept as a record of that international registration in the prescribed manner.
- After recording the particulars of any international registration refers in sub-section(1), the registrar may be satisfied that in the circumstances of the case the trademark protection in India should not be granted or such protection may be granted subject to the limitations or conditions additional to or different from the conditions or limitations subject to which the international registration has been accepted, after hearing the applicant, if he desires, refuse grant of protection and inform the international bureau in a prescribed manner within a period of 18 months from the date on which the advice referred in sub-section (1) was received.
- Nothing can be found by the registrar in the particulars of an international registration in order to refuse the grant of protection under sub-section(2), he may within the prescribed period cause such international registration need to be advertised in the prescribed manner.
- The provisions of sections (inclusive) (9 to 21), 63 and 74 may display mutatis mutandis in relation with an international registration as if the registration was an application for the registration of a trademark under section 18.
- The protection of the trademark has not been opposed and time for notice of opposition got expired, the registrar within a period of eighteen months of the receipt of advice under sub-section (1) can notify the international bureau, it shall be deemed that the protection may be extended to trademark.
- The registered proprietor of trademarks makes an international registration of a trademark designates India, from the date of registration, the international registration shall be deemed to replace the registration which has been held in India without prejudice to any right which has been acquired under such previously held registration and the registration may, upon request by the applicant, can makes the necessary entry in the register referred in sub-section (1) of section 6.
- The one who holds the international registration of a trademark designates India and who has not been extended the protection in India would have the same remedy which is available to any person makes an application for the registration of a mark under section 18 and that has not resulted in registration under section 23.
- At any time before the expiry of a particular duration of 5 years of the international registration, such registration may be transferred to another person or not, the related basic application or, as the case may be, the basic registration in contract other than India been withdrawn or cancelled or has expired or has finally refused in respect of all the goods or services listed in international registration, the protection which may result from such international registration in India shall cease to have effect.
36 F: Effects of international registration:
- India has been designated or the date of recording from the date of international registration of a trademark. In the register of international bureau about the extension of protection, May results from an international registration of a trademark of India, the trademark protection in India may be the same as if the trademark be registered in India.
- The indication of classes of goods and services which is given by the applicant shall not bind the registrar with regard to the determination of the scope of trademark protection.
- Renewal and duration of international registration of a trademark at the international bureau for a period of ten years may be renewed for a period of ten years from the expiry of preceding period.
- Subject to the payment of a surcharge which has been prescribed by the rules, a grace period of six months will be allowed for renewal of international regulation.