S. 36D. International application originating from India.—(1) where an application for the registration of a trade mark has been made under section 18 or 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person or not, the application under section 18 or the registration under section 23, as the case may be, has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the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.
Section 36D deals with international applications originating from India, where international registrations are sought.
Making of international application
It is one of the fundamental principles of Madrid System that an international application may be filed only if it has already been registered or applied for in the Trade Mark Office of the Contracting Party with which the applicant has the necessary connection. This office is referred to office of origin. The applications or registrations which form the basis for filing international application are referred to as the “basic application” under section 18 or “basic registration” under section 23 as the case may be.
As per sub-section (1), the international application should be made on the form prescribed by the Common Regulations governing international registration of trade mark. The office of origin will ensure that the correct form is used. As India will be bound only be the Protocol, only official form MM2 will ever be used for applications presented by TMR, India. (See Administrative instructions—Annexed). Forms must be filled legibly with a typewriter or other machine. Handwritten forms are not acceptable by the International Bureau. The TMR, India can device its own form, instead of opting to use the forms produced by the International Bureau. In that case, the guidelines must be followed.
The international application is subject to payment of fees, namely—
- A basic fee
- A complimentary fee in respect of each designated Contracting Party for which no individual fees is payable.
- An individual fee in respect of any Contracting Party which is designated under the Protocol and has declared that it wishes to receive such a fee;
- A supplementary fee in respect of each class of goods and services beyond the hired, no supplementary fee is payable hower where all the designations are ones in respect of which an individual fee has to be paid.
- The fee may be payable to the international bureau or the office of origin which accepts to collect the fee.
Sub-section (2) provided that a person who is already holding an international registration may make an application for extension of protection to any other Contracting Party. In such cases the person will have to make application on the prescribed form as given in the Common Regulations.
Where the contracting party of the holder is a party only to the Protocol, only a contracting party to the Protocol may be designated; the designation is made under the Protocol
Sub-section (3) deals with the procedure at the application stage. It mandates that the applicant should designate the Contracting Parties where the protection resulting from the international registration is required. Only States or organizations which are party to the same treaty (Protocol) as the Contracting party whose office is the office of origin may be designated. For example, India is a contracting party only to the Protocol and if the country designated by the applicant is a party to the Agreement only, the designation will be disregarded by the International Bureau, which ill so inform the applicant. [Rule 9(4)(a)(xv)].
Sub-section (4): The international application must contain the prescribed particulars as given in the Form. Including a reproduction of the mark. Such reproduction of the mark must be identical in all respects with what is filed with the basic application or the subject of basic registration. It should be in respect of the same goods or services for which registration is sought and should be classified in accordance with international classification.
An international application which is exclusively governed be the Protocol may be based cither on a registration be the Office of origin or on an application for registration filed with that Office [Article 2(1)].
A basic registration must be indicated by its registration number and its date of registration. This date should be the date which under the law that governs the office concerned, is regarded as the date of registration. It will not necessarily be the date on which the mark was actually recorded be the Office in its register. For instance if, under the law applicable to that office a mark is registered as of the date of filing, that is the date that should be given here. In India under section 23, the date of making of the application will be deemed to be the date of registration, subject to priority date under section 154.
The date on which the trade mark actually entered in the register, as provided in section 47(1)(b) is limited for the purpose of that section only. It is not the date of registration for other purposes.