S. 36E. 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 opposed and the time for notice of opposition 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 mares 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 subsection (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 registration in 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.
Section 36E makes provisions about the manner in which applications for international registration where India has been designated, are to be dealt with.
Sub-section (1): On receipt of advice from the international bureau about any international registration, where India has been designated, the Registrar is required to keep a record of the particulars in the prescribed manner.
Any communication between the office and international bureau, including the presentation of an international application, may be made by electronic transmission.
Indication of Dates.—Any indication of a date in an official form must consist of the day in two digits, followed by the number of the month in two digits, followed by the number of the year in four digits, all in Arabic numerals and day, month and year being separated by slashes (/). For example, the date March 9, 2004, is to be written as “09/03/2004”.
Sub-section (2): After recording the particulars of international registration, where India has been designated, the Registrar will subject that registration to a substantive examination as though it is an application received direct from the applicant for registration of the mark under the Act.
If on consideration of the international registration, the Registrar has any objection to the granting of protection to the trade mark in India 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 offer a hearing to the applicant, if he desires to be heard. Communication of such objection in the nature of “provisional refusal” for grant of protection to the international registration.
In all such cases, it is mandatory on the part of the Registrar to communicate the orders within 18 months from the date on which the advice referred to in sub-section (1) is received from the international bureau.
Advertisement of international registration [Sub-section (3)]. – Every application for registration of trade mark received under the Trade Marks Act, 1999, and, which is free from office objection will be advertised under section 20(1) in the trade marks journal, which is now issued in electronic form.
In the case of international registration where India has been designated and advice to that effect has been received under section 36E(1), the application covered by international registration will be examine fully in accordance with the provision of the Act and Rules. Where the international registration is free from office objection, the same procedure will follow regarding advertisement of the international registration.
As sub-section (3) enacts where the Registrar finds nothing objectionable to refuse the grant of protection under sub-section (2), he shall cause the application to be advertised in the prescribed manner and within the prescribed period.
Sub-section (4).—Sections 9 to 21 (both inclusive), 63 and 74 of the Act are made applicable mutatis mutandis in relation to international registration, as though such international registration is an application for registration of a trade mark under section 18 of the Act. In other words, there will be comprehensive examination of the international registration in respect of distinctiveness of the trade mark including relative grounds for refusal of protection, etc. The registration will also be subject of advertisement and open to third party opposition on any of the grounds available under the Act.
It is open to the Trade Marks Registry to raise objections to the specification of the goods / service wherever it considers that the terms are too broad or too vague; such objection might take the form of a partial refusal. It may result in the narrowing of the protection.
The Indian law permits filing of a single application for registration of mark in several classes. The same will hold well in respect of an international registration.
Sub-section (5),– If after advertisement in the journal, the international registration has not been opposed and / or the time for filing notice of opposition has expired, the Registrar is required to notify the International Bureau within 18 months of the receipt of advice of international registration from the Bureau under section 36E(1). In case the Registrar fails to notify the Bureau within this period, it will be deemed that protection to the international registration has been extended by India to the trade mark. It follows that compliance with time limit is an essential requirement under the Protocol.
Statement of grant of protection.– An office which has examined an international registration in which it is designated and found no grounds for refusal may issue a statement of grant of protection.
There is no requirement for an Office to issue a statement when it decides that it is not going to refuse protection; it is fundamental principle of the Madrid System that, if no notification of provisional refusal is sent within the appropriate time limit (one year or 18 months), the mark is automatically protected in the Contracting Party concerned for all the goods and services requested. This has always been considered one of the main advantages for users of the system of international registration.
Time limit for official action.— At present there is no time limit prescribed for the Trade Marks Registry in respect of official actions.3(No time limit for official action is prescribed within which (a) an application is to be examined; (b) an application is to be advertised from the date of its acceptance; (c) a trade mark is to be registered when there is no opposition or the prescribed period for opposition is over.). With the adherence to Madrid Protocol by India, the Trade Marks Registry in India, the Trade Marks Registry in India will have to give effect to time limit prescribed under the Protocol for the benefit of all the users of the Trade Marks registration system in India.
Section 36E provides that advertisement of acceptance shall take place within the prescribed time. This time limit will apply not merely to international registrations, but all cases of trade mark applications filed generally under the Act.
Sub-section (6): Sub-section (6) of section 36E gives effect to Article 4bis of the Madrid Protocol, according to which an international registration is deemed to replace a national registration for the same mark and the same goods / service recorded in the name of the same person in a designated country. The effect of this replacement is that, if the national registration is not renewed, the holder of the international registration may continue to benefit from the earlier rights acquired by reason of that national registration. Although replacement takes place automatically, the holder of the international registration may request the Office of the Contracting Party in which the national registration is recorded to take note in its register of the international registration.
Notwithstanding Replacement of a national registration, it will be in the interest of the holder of the international registration to renew the national registration during the five year period during which the international registration is dependent on the fate of the basic application, the registration resulting therefrom or the basic registration.
According to rule 21 of the common regulations where the office of a designated Contracting Party has taken note in its Register, following a request made by the holder with that Office, that a national registration has been replaced by an international registration, that Office must notify the International Bureau accordingly. The International Bureau records the indications so notified in the International Register and informs the holder accordingly. It also publishes them in the Gazette.
Remedies available to holder of International Registration [Sub-section (7)],–Sub-section (7) enacts that 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.
The remedies are those available to an unregistered proprietor of a trade mark under section 18 and a registered proprietor of a trade mark under section 18 and a registered proprietor of a trade mark on the registration of mark under section 23 of the Act. Section 27(1) expressly enact that—
“(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.”
While no infringement action will lie in respect of unregistered trade mark, the common law rights of the trade mark owner to take action against any person for passing off goods as the goods of another person or services provided by the another person or remedies thereof, are wholly unaffected.
The rights of registered proprietor of a trade mark are contained in section 28 and 29 of the Act. The rights of the registered proprietor of a trade mark are enlarged to specifically provide that the registered trade mark is infringed if—
(a) The mark is identical and is used in respect of similar goods or service; or
(b) The mark is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark;
(c) The trade mark is identical and is used in relation to identical goods or services;
And that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trade mark.
If further lays down that in cases falling in category © above, there will be a legal presumption of likelihood of confusion on the part of the public.
Sub-section (4) of section 29 seeks to lay down that a registered trade mark is infringed by a person, if he uses a mark which is identical or similar to the trade mark, but on goods or services which are not similar, provided the registered trade mark has a reputation in India and the use of the mark without due cause would take unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.
Sub-section (5) of section 29 seeks to prevent a person from adopting someone else trademark as part of that persons trade name or business name by explicitly providing that such action shall also constitute an infringement under this Act. This provision will bring this clause in harmony with the proposed amendments to section 20 and 22 of the Companies Act, 1956.