THE TRADE MARKS ACT, 1999
[As amended by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]
CHAPTER 4A - SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL REGISTRATION UNDER THE MADRID PROTOCOL
- 36A. APPLICATION OF ACT IN CASE OF INTERNATIONAL REGISTRATION UNDER MADRID PROTOCOL.—
- 36B. DEFINITIONS.—
- 36C. TRADE MARKS REGISTRY TO DEAL WITH INTERNATIONAL APPLICATIONS.—
- 36D. INTERNATIONAL APPLICATION ORIGINATING FROM INDIA.—
- 36E. INTERNATIONAL REGISTRATIONS WHERE INDIA HAS BEEN DESIGNATED.—
- 36F. EFFECTS OF INTERNATIONAL REGISTRATIONS.—
- 36G. DURATION AND RENEWAL OF INTERNATIONAL REGISTRATION.—
36A. 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.
36B. DEFINITIONS.—
(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.
Explanation.—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 intergovernmental 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.
36C. TRADE MARKS REGISTRY TO DEAL WITH INTERNATIONAL APPLICATIONS.—
36D. 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 of the protection resulting 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 correspond 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.
36E. INTERNATIONAL REGISTRATIONS WHERE INDIA HAS BEEN DESIGNATED.
36F. EFFECTS OF INTERNATIONAL REGISTRATIONS.—
(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.
36G. 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 period.
(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.