India: The Madrid Protocol And Its Applicability In India

Last Updated: 19 August 2011

By Christine Chiramel (Advocate)
Associate, Vaish Associates Advocates, New Delhi, India, christine@vaishlaw.com

Abstract- The Trade Marks (Amendment) Act, 2010 passed on 21.09.2010 will bring the Madrid Protocol into force in India, once it is notified. This will enable applicants to make a single international application for trademark registration across numerous countries granting widespread trademark protection rights. The international registration process and applicability in India overcoming procedural glitches are to be analysed for a smooth transition.

Keywords- Trademarks, Madrid Protocol, Madrid System, International Application, Madrid Application, The (Indian) Trade Marks (Amendment) Act, 2010

References:
http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html
http://www.wipo.int/madrid/en/legal_texts/common_regulations.htm

INTRODUCTION TO TRADEMARK PROTECTION- INDIA

Trademarks are world over known to constitute words, names, letter, numeral, graphical representations in the form of shape/ configuration of goods, labels, logos, packaging, combination of colors, etc. with respect to goods or services, that are capable of distinguishing the goods or services of one person from those of another. Unregistered trademark rights accrue from common law creating a passing off right of action that must be established through priority date of first use along with continuous use over a period of time.

Although trademark registration is not compulsory in India, a major advantage of registration is that it confers a statutory monopoly and constitutes prima facie proof or evidence in the eyes of law towards the creation of an exclusive right in favour of the owner of the trademark. Infringement action under The (Indian) Trademarks Act, 1999, can be pursued only for a registered trademark.

The Trade Marks (Amendment) Act, 2010 passed on 21.09.2010 will bring the Madrid Protocol into force in India, once it is notified. This will enable applicants to make a single international application for trademark registration across numerous countries granting widespread trademark protection rights.

MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS (THE MADRID SYSTEM):

The Madrid System functions under the Madrid Agreement (1891) and the Madrid Protocol (1989). It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. The system enables the registration of trademarks in multiple jurisdictions worldwide that are part of Madrid Union's 85 member countries by filing a single application in the Applicant's national trademark office, or regional trademark office.

 Applicant Requirements:

A Madrid application can be filed by a natural person, or legal entity, having real and effective industrial or commercial establishment status, or being a domicile, or being a national of a Madrid Union Member Country. The Madrid Protocol allows applicants to choose the exact countries in which they seek protection.

Applicability of the Madrid System in India:

On 8th February 2007, the Union Cabinet ratified India's accession to the Madrid Protocol. The Trade Marks (Amendment) Act, 2010 was passed on 21st September, 2010 to bring into force the Madrid Protocol in India, although the same is still to be implemented i.e. the effective date for the Amendment Act to come into force has not yet been notified.

One of the major changes brought about by the amendments include Section 23(i) wherein the registration process for a mark is to be completed in a time bound manner "within eighteen months of the filing of the application". This change will challenge every aspect of the registration process within trademark office in India, forcing deadlines at every stage of the registration procedure laid out under the Trademarks Act and supplemented by the Trademark Rules in India.

Another major amendment to be implemented is the insertion of a new Chapter IVA in the principal Act in light of international applications and registrations under the Madrid Protocol.

Procedure for an international application under the Madrid Protocol:

Upon India being a signatory to the Madrid Protocol, the applicant, while making an international application to the National Office on Form MM2, may select from the list of the member countries where he seeks protection of mark. The application form may be filled out in English, French or Spanish and is subject to the payment of a basic fee, complementary fee for each designated Contracting Party (member country) and a supplementary fee for each class of goods and services. Such fee may be payable to WIPO directly or the Office of Origin which may charge an additional handling fee, and thereafter the following procedure will be followed-

  1. The Office of Origin in the country of origin examines whether the international application corresponds to a mandatory basic application or basic registration and complies with home state requirements.
  • A Basic application defined under Section 36 B (b) of the Trade Marks (Amendment) Act, 2010 is an application for registration of a trademark filed under Section 18 of the Act, and which is used as a basis for applying for an international registration. Basic registration defined under Section 36 B (c) is the registration of a trademark under Section 23 of the Act, and which is used as a basis for applying for an international registration.

  • The Office of origin must certify that under Article 3 (1) of the Protocol the mark is the same mark as that in the basic registration, or basic application, certify the initial date on which it received the request to present the international application.
  1. The application should be received by the International Bureau from the Office of Origin [Article 3 (4) of the Protocol] within two months of that initial date of receipt of the application by the Office of Origin, that initial date will be the date of the international registration. The International Bureau examines 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 requirement.
  2. The International Bureau informs the Office of origin and the applicant of any irregularities; these must be removed within three months, otherwise the application will be considered abandoned. On successful examination the International Bureau then Records the mark in the International Register, publishes the mark in the Gazette, and notifies each contracting party or member country that are the designated countries listed in the application, asking for their consequent approval, and granting of registration.
  1. On further examination of the Office of a Contracting Party in the exact procedure adopted for a direct national application, if grounds for objection are found during the ex officio examination, or if an opposition is filed, the Office can declare a provisional refusal (within 18 months of receipt of the application's notification from the International Bureau for India) for protection of the mark in that member country.
  • Refusal of Protection based on Oppositions:
  • Article 5 (2) (c) of the Madrid Protocol states that such refusal by the National Office of designated country based on oppositions can be made post the expiry of the 18 month time limit from notification receipt, provided it has, before the expiry of the time limit, informed the International Bureau of the possibility that oppositions may be filed after the expiry of the time limit, and the notification of the refusal is made within one month from the expiry of the opposition period and, in any case, not later than seven months from the date on which the opposition period begins.
  • A provisional refusal if declared by a member state is recorded in the International Register by the International Bureau, and further published in the International Gazette, along with the transmission of a copy to the holder of the international registration.
  • All Post refusal procedure is carried out directly between the holder and the Office concerned, such as review, appeal, or response to an opposition.
  1. On completion of above procedures, a statement is sent to the International Bureau indicating the provisional refusal is confirmed, or totally withdrawn, or partially withdrawn. This statement is also recorded in the International Register and published in the Gazette. If no objection is received by the International Bureau from the designated Member States, within the prescribed time limit i.e. normally twelve months (extended to 18 months under the Protocol for India), or a grant of protection is issued by the Member State Office, it is deemed to be accepted by the Member State and the mark will then have the same protection as registered national marks in that country.
  • The duration of protection granted by an international registration is 10 years, before which a renewal application must be filed to extend protection. A renewal grace period of 6 months may be granted under Section 36G (2) of the Act.

Dependence on the Basic Mark (Article 6 of the Madrid Protocol):

Under Section 36 E (8) for a period of five years from the date of an international registration, if the initial basic national registration ceases to have effect, through a cancellation following a decision of the Office of origin, or court, or voluntary cancellation, or non-renewal, the international registration will no longer be protected.

Where the international registration was based on an application in the Office of origin, it will be canceled if, and to the extent that, that application is refused or withdrawn within the five-year period, or if, and to the extent that, the registration resulting from that application ceases to have effect within that period.

The Office of origin is required to notify the International Bureau of facts and decisions concerning such ceasing of effect or refusal. The cancellation is published in the Gazette and notified to the designated Contracting Parties. After the expiry of the period of five years from the date of international registration, the registration becomes independent of the basic registration or basic application.

Scope of an International Registration:

An international registration is deemed to replace a national or regional registration for the same mark under Section 36E (6) of the (Indian) Trademarks Act and Article 4bis of the Protocol.

If the national or regional registration is not renewed, the holder of the international registration may continue to benefit from the earlier rights acquired by reason of that national or regional registration.

The holder of an international registration can expand the geographical scope of the protection of his mark by filing a subsequent designation.

The following may also be recorded in the International Register (Article 9bis of the Protocol):

  • limitation of the list of goods and services in respect of all or some of the designated Contracting Parties;
  • renunciation in respect of some of the designated Contracting Parties for all the goods and services;
  • cancellation of the international registration in respect of all the designated Contracting Parties for all or some of the goods and services;
  • license granted in respect of all or some of the designated Contracting Parties, and for all or some of the goods and services.

Information concerning changes, cancellation and licenses are published in the Gazette and notified to the designated Contracting Parties.

CONCLUSION

Advantages of the Registration under the Madrid System:

  • Single application for trademark protection in numerous Madrid member countries
  • Wider protection
  • Single fee for trademark application in one language (English or French)
  • Speedy and cost effective process of registration

There is no time limit to apply for an international application once a national application/ registration is pending or granted. The international application depends on a mandatory basic national application or registration as long as it is pending and valid. If either fail before the international registration is granted or within 5 years of the international registration being granted, the international application/ registration will also become invalid.

There is no specific provision explaining the procedure for dealing with oppositions or replies between the Indian registry and the international applicant with regard to an international application filed abroad and notified to India by the International Bureau for registration.

Indian Trademark Rules also specify that an applicant should have an address for service in India which will apply to International applicants once the Madrid Protocol is effectively implemented through the notification of the Amendment Act, 2010.

Nothing in the amendment act specifies opposition proceedings in international Madrid applications where India is a designated country. The Amendment act increases the period for notice of opposition to 4 months. India will have to amend the trademark registration procedure rules for a smooth transition into a Madrid system procedure and post amendment registration process.

Article by Christine Chiramel, Advocate, Delhi High Court, New Delhi, India
Associate, Vaish Associates Advocates, New Delhi, India

© 2011. All rights reserved with Vaish Associates Advocates, 1st Floor, Mohan Dev Building, 13 Tolstoy Marg, New Delhi-110001, India . The content of this article is intended to provide a general guide to the subject matter. Specialist professional advice should be sought about your specific circumstances. The views expressed in this article are of the author of this article. Specific Questions relating to this article should be addressed directly to the author.

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