Trade Marks (Amendment) Act,2010
Section 5. Insertion of new Chapter IV-A
After Chapter IV of the principal Act, the following chapter shall be inserted, namely
SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL REGISTRATION UNDER THE MADRID PROTOCOL
36-A. Application of Act in case of international registration under Madrid Protocol.
The provisions of this chapter shall apply to international applications and international registrations under the Madrid Protocol.
In this chapter, unless the context otherwise requires,
(a) “application”, in relation to a Contracting State or a Contracting Organisation, means an application made by a person who is a citizen of, or is domiciled in, or has a real and effective industrial or commercial establishment in, that Contracting State or a State which is a member of that Contracting Organisation, as the case may be.
For the purposes of this clause, “real and effective industrial or commercial establishment” means and includes any establishment where some bona fide industrial or commercial activity takes place and need not necessarily be the principal place of business;
(b) “basic application” means an application for the registration of a trade mark filed under Section 18 and which is used as a basis for applying for an international registration;
(c) “basic registration” means the registration of a trade mark under Section 23 and which is used as a basis for applying for an international registration;
(d) “common regulations” means the regulations concerning the implementation of the Madrid Protocol;
(e) “contracting organisation” means a Contracting Party that is an inter¬governmental organisation;
(f) “contracting party” means a Contracting State or Contracting Organisation party to the Madrid Protocol;
(g) “contracting state” means a country party to the Madrid Protocol;
(h) “international application” means an application for international registration or for extension of the protection resulting from an international registration to any Contracting Party made under the Madrid Protocol;
(i) “international bureau” means the International Bureau of the World Intellectual Property Organisation;
(j) “international registration” means the registration of a trade mark in the register of the International Bureau effected under the Madrid Protocol;
(k) “Madrid Agreement” means the Madrid Agreement concerning the International Registration of Marks adopted at Madrid on the 14th day of April,1891, as subsequently revised and amended;
(l) “Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks adopted at Madrid on the 27th day of June,1989, as amended from time to time.
36-C. Trade Marks Registry to deal with international applications.
Notwithstanding anything contained in sub-section (3) of Section 5, an international application shall be dealt with by the head office of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by notification in the Official Gazette, specify.
36-D. International application originating from India.
(1) Where an application for the registration of a trade mark has been made under Section 18 or a trade mark 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 trade mark.
(2) A person holding an international registration may make an international application on the form prescribed by the Common Regulations for extension o
f the protection re sulting from such registration to any other Contracting Party.
(3) 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.
(4) The Registrar shall certify in the prescribed manner that the particulars appearing in the international application corresponding to the particulars appearing, at the time of the 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 that 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.
(5) Where at any time before the expiry of a period of five years of an international registration, whether such registration has been transferred to another person or not, the application under Section 18 or the registration under Section 23, as the case may be, has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the protection resulting from such international registration shall cease to have effect:
Provided that where an appeal is made against the decision of registration and an action 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.
(6) The Registrar 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).
(7) The Registrar shall notify the International Bureau the cancellation to be effected to an international registration keeping in view the current status of the basic application or the basic registration, as the case may be.
36-E. International registrations where India has been designated.
(1) The Registrar shall, after receipt of an advice from the International Bureau about any international registration where India has been designated, keep a record of the particulars of that international registration in the prescribed manner.
(2) Where, after recording the particulars of any international registration referred to in sub-section (1), the Registrar is satisfied that in the circumstances of the case the protection of trade mark in India should not be granted or such protection should be granted subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the international registration has been accepted, he may, after hearing the applicant if he so desires, refuse grant of protection and inform the International Bureau in the prescribed manner within eighteen months from the date on which the advice referred to in sub-section (1) was received.
(3) Where the Registrar finds nothing in the particulars of an international registration to refuse grant of protection under sub-section (2), he shall within the prescribed period cause such international registration to be advertised in the prescribed manner.
(4) The provisions of Sections 9 to 21 (both inclusive), 63 and 74 shall apply mutatis mutandis in relation to an international registration as if such international registration was an application for registration of a trade mark under Section 18.
(5) When the protection of an international registration has not been op
posed and the time f or notice of oppositions has expired, the Registrar shall within a period of eighteen months of the receipt of advice under sub-section (1) notify the International Bureau its acceptance of extension of protection of the trade mark under such international registration and, in case the Registrar fails to notify the International Bureau, it shall be deemed that the protection has been extended to the trade mark.
(6) Where a registered proprietor of a trade mark makes an international registration of that trade mark and designates India, the international registration from the date of the registration shall be deemed to replace the registration held in India without prejudice to any right acquired under such previously held registration and the Registrar shall, upon request by the applicant, make necessary entry in the register referred to in sub-section (1) of Section 6.
(7) A holder of international registration of a trade mark 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 trade mark under Section 18 and which has not resulted in registration under Section 23.
(8) Where at any time before the expiry of a period of five years of an international registration, whether such registration has been transferred to another person or not, the related basic application or, as the case may be, the basic regitration in a Contracting Party other than India has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the protection resulting from such international registration in India shall cease to have effect.
36-F. Effects of international registration.
(1) From the date of the international registration of a trade mark where India has been designated or the date of the recording in the register of the International Bureau about the extension of the protection resulting from an international registration of a trade mark to India, the protection of the trade mark in India shall be the same as if the trade mark had been registered in India.
(2) The indication of classes of goods and services given by the applicant shall not bind the Registrar with regard to the determination of the scope of the protection of the trade mark.
36-G. Duration and renewal of international registration.
(1) The international registration of a trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period of ten years from the expiry of the preceding priod.
(2) Subject to payment of a surcharge prescribed by the rules, a grace period of six months shall be allowed for renewal of the international registration.’.