S. 36C. 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.
Procedure in the case of normal applications An application for the registration of a trade mark should be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application, as having a place of business in India, is situate. Where, however, either the applicant nor any of the joint applicants carries on business in India the application should be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application is situate.
The principal place of business in India of a person who carries on business in the goods concerned in a trade mark is that place in India where the business is carried on by him. If the business is carried on by him at more than one place, his principal place of business in India will be the place mentioned by him as the principal place of business in India. Where a person is not carrying on business in the goods concerned in a trade mark but is carrying on any other business in India, his principal place of business in India will be that place where he carries on business in India. If such a person carries on business at more than one place, the place mentioned by him will be his principal place of business in India. Where a person does not carry on any business in India but has a place of residence in India, then such place of residence will be his principal place of business in India (rule 3).
If an application for registration of a trade mark is filed at an office of the Trade Marks Registry which is not the appropriate office of the Trade Marks Registry, the Registrar will return it to the person concerned (rule 9).
The Trade Marks Registry in India has its head office at Mumbai and Branch Offices at Ahmedabad, Kolkotta, New Delhi and Chennai. Rule 4 of the Trade Marks rules, 2002 states what is the appropriate office for the purposes of making an application for registration of a trade mark under Section 18, etc. and Rules 8 and 11 prescribes the procedure for filing of documents and payment of fees. Rule 9 also stipulates the consequences of not filing the documents at the appropriate office.
Procedure for Madrid Applications
The new provision in Section 36C empowers the Central Government to issue a notification in the official Gazette specifying that the international application will be dealt with by the Head Office of the Trade Mark Registry or any other Branch Office of the Registry. Since the Amending Act stipulates the time limit for disposal of applications, it would be easier for better management of the work of disposal of international applications if they are all handled at one central place. This procedure is therefore a deviation from the procedure adopted in the case of applications for registration of trade mark in the normal course, namely other than for international.
It is to be noted that a person may seek international registration from India on the basis of either an application already made or on the basis of registration already secured. In all cases it is necessary that the applications must be made only through the Office of origin, with which the applicant has the necessary connection. Any international application sent directly to the international bureau will not be considered by them and will be returned to the sender.