India has signed the Madrid Protocol on April 08, 2013 and has become the 90th member of the Madrid Protocol. The signing of Madrid Protocol by India is a significant step towards the introduction of Madrid System for the registration of Trademarks in India. The trademark Amendment Act, 2009 which is based upon the Madrid Protocol will come into force on 08/07/2013. The chain of events had started in 2007 wherein a new bill was introduced for the amendment of the Trade Marks law. At this important Juncture let us recap the important points which will be introduced once the new Trademark Amendment Act, 2009 will be notified by the government on 08/07/2013.
Changes introduced under new act are mainly related to the introduction of Madrid Protocol for international filing. This article mainly deals with the procedure under the Madrid system of Trade Marks registration.
Introduction of Madrid Protocol in India
Under the current Trade Mark Act of 1999, a person does not have an option of filing an international application; moreover he has to file different application if he wants to protect his trademarks in more than one country. The introduction of Madrid protocol gives an option to an applicant to go for an international application based upon the basic application or registration and to apply in different member countries in one single application. Let us analyze the provision introduced under the Trademarks Amendment Act, 2009.
A new chapter IVA is inserted with the title "Special provisions relating to protection of trade marks through international registration under the Madrid protocol". This new chapter is corresponding to the Article 3, 3bis, 3ter and Article 4 of the Madrid Protocol.
The process for international registration provided under the amendment bill is simplified hereunder: A person who is a citizen of, or is a domicile in or has a real and effective commercial establishment in a contracting state or a state who is a member of contracting organization can make an application for the registration of trademark in India under the new Amendment Act of 2009. A person who has applied for trademark in India or who is a registered proprietor of a trademark can go for international registration. In the application he has to designate the countries in which he wants protection resulting from the international application. With the introduction of Madrid Protocol a person can go in for the international registration by filing a single trademark application. He just needs to file an international application based on the parent application / registration and in that application he needs to give the name of the countries in which he wants to apply for the registration.
Registrar of the Indian Trademark Office before forwarding the international application within prescribed period to the International Bureau for Registration shall certify the particulars mentioned in the application relating to the basic application or the basic registration and also the application number or the registration number as the case may be. He will also indicate the date of international application. It is the duty of the registrar to forward the international application to the International Bureau of registration and to check and verify that all the information regarding the parent application / registration is correct.
If the basic registration is cancelled for some reasons, in the country of origin, during the first five years, the international registration automatically stands cancelled in all the designated countries. This also gives an advantage to a person to oppose the registration of a mark only in the country of origin and that person need not oppose it in all the designated countries. This possibility of challenging an international registration through a national registration is referred to as 'Central Attack' feature of the Agreement.
The Registrar shall have to provide all the information to the International Bureau regarding the registration, cancellation, withdrawal, assignment, and transmission etc of a trademark application/ registration which is subject to an international application, for the five years from the date of the international registration.
In cases where India is a designated state, the Registrar after receiving an advice from the International Bureau about any international registration, shall keep a record of the same in prescribed manner. The registrar has to provide his opinion regarding the acceptance or refusal of application after giving an opportunity to the applicant of being herd within eighteen months from the date of international application and shall made the application published in the Trademark Journal.
After the expiry of the period of opposition (four months as proposed in amended bill) the Registrar within eighteen months from the receipt of the advice shall notify the International Bureau about the extension of protection to India under international registration, if the Registrar failed to do so the protection in India shall deemed to be extended in India.
The time line set under the Madrid Protocol is very strict and need to be follow accordingly. The discretion of the Registrar under the present Act of 1999 has not been followed under the current amended bill.
The introduction of Madrid Protocol for international filing is necessary to bring Indian Trade Marks practice in common parlance to the international standard. Madrid Protocol will not only help the local applicant to have a cost effective registration outside India but it also provide a strict timeline to complete the process of registration. The Indian Trade Marks Office is in process of upgrading itself to match the international standards by providing a transparent atmosphere. The Introduction of the Madrid Protocol further strengthens Indian Trademark regime's march towards the excellence in Intellectual property rights registration.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.