S. 5. Insertion of new Chapter IVA.—After Chapter IV of the principal Act, the following Chapter shall be inserted, namely:—
S. 36A.APPLICATION OF Act in case of international registration under Madrid Protocol Definition.—The provisions of this Chapter shall apply to international applications and international registrations under the Madrid Protocol.
NOTES
Accession to the Madrid Protocol entailed amendments to the Trade Marks Act. Accordingly a new Chapter IVA has been incorporated containing special provisions relating to protection of international registration of trade marks under the Madrid Protocol, Provisions are made for receiving applications for international registration received from the international Bureau and also those originating from India. Provisions have been made for maintaining a record of international registrations, the effect of international registration, their duration and removal.
The new Section 36A which has been added enacts that the provisions made in Chapter IVA will apply to international application and international registrations under the Madrid Protocol. It is obvious that the provisions made in this Chapter are special and are applicable only to international applications and registrations under the Protocol, though the other provisions of this Act will apply mutatis mutandis to those cases.
S. 36B. Definitions.—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.
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;
(i) “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.
NOTES
The Madrid Protocol uses certain special expressions and accordingly it has been found necessary to define those expressions which have been used in the Amending Act, in the new section 36A”
“(a) “application”, in relation to a Contraction 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”.
Background
the international registration of marks is governed by two treaties, namely Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol relating to the Madrid Agreement, which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996, under these treaties, common regulations have been made.
Any country which is a member of the International Convention for protection of industrial property [Paris Convention] can accede to the Madrid System. It is open to a contraction state to become a party either to the Agreement or to the Protocol or both. India has decided to become party to the protocol.
At present, a person desirous of obtaining registration of his trade mark in other countries has to make separate applications in different languages and pay different fees in the respective countries. Since there was no provision under the Trade Marks Act, 1999 to facilitate Indian nationals to secure simultaneous protection of trade marks in other countries, suitable amendments have been made to secure the objective. This will also facilitate nationals of the Madrid system to obtain protection of their trade marks likewise in India.
Madrid system of international registration enables the nationals of the Member countries of the Protocol to obtain protection of trade marks within the prescribed period of 18 months by filling a single application with one fee and in one language in their country of origin, which in turn is transmitted to the other designated countries through the International Bureau.
With the above background, the expressions defined in Section 36B are dealt with below:
Definitions
Clause (a) “application”,– The expression “application” has been defined as meaning 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, a Contracting State or State which is a member of that Contracting Organization, as the case may be.
The facilities available under the Madrid Protocol can be used only by citizens of countries who are members of the protocol. Alternatively he should be domiciled in, or has a real and effective industrial or commercial establishment in a Contracting State.
The Parris Convention also uses the expression “real and effective industrial or commercial establishment”. This expression which is used in clause (a) of section 36B is further amplified by way of explanation to mean and include “any establishment where some bona fide industrial or commercial activity takes place and which need not necessarily be the principal place of business. The system cannot be used by a person or legal entity which does not have the necessary connection through establishment, domicile or nationality with a member of Madrid Union. The system cannot be also used to protect a mark outside the Madrid System. This restriction is thus intended to prevent nationals of countries who are not members of the Protocol from availing of benefits of the Protocol.
The original provision in the Paris Convention (Article 3), which simply referred to “an establishment”, was considered to be too broad and should be restricted. The term “effective” makes it clear that, while the establishment must be one at which some industrial or commercial activity takes place (as distinct from a mere warehouse), it need not be the principal place of business.
It follows, therefore, that an enterprise may have several real and effective industrial or commercial establishments in different States that are party to the Protocol. In that case any of the Offices of the respective State may qualify to be the Office of origin under the Protocol.
Clause (b) “basic application”, —An application for international registration of trade mark from India under the Madrid Protocol can be made either on the basis of an application or on the basis of registration in the Trade Mark Registry on India with which the applicant has necessary connection for filing the international application.
The expression “basic application” used in sub-section (7) of Section 36D would mean 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.
The international application may relate to only to the goods and services covered by the basic application or registration.
In most cased, the international application will be based on a single registration or application which covers the goods and services listed in the international application. It is, however, possible to base an international application on several registrations (under the Agreement) or on several application and/or registrations (under the Protocol) which together cover the goods and services to which the international application relates. The basic applications and/or registrations must all be in the name of the person filing the international application and must have been made with the same Office.
Clause © “basic registration”,—The expression “basic registration” would mean the registration of a trade mark under section 23 and which is used as a basis for apply for an international registration. A mark may be subject of an international application only if it has already been registered (or, applied for) in the trade mark office of the Contracting Party with which the applicant has necessary connection to be able to file the international application.
Clause (d) “common regulations”,—The expression “common regulations” would mean the Regulations concerning the implementation of the Madrid Protocol Made by the International Bureau. The common regulations are given in the Appendix.
Clause (e) “contracting organisation”,–This means a Contracting Party that is an intergovernmental organisation. In addition to a State which is a Party to the Paris Convention, an inter-governmental organisation may become a party to the Protocol subject to certain conditions.
Clause (f) “contracting party”,–The expression “contacting party” would cover parties to the Protocol and organizations party to the Protocol. They are referred to collectively as Contracting Parties. The list of contracting parties is given in the Annexure. The contracting parties constitute the Madrid Union, as provided in Article 19 of the Paris Convention.
Clause (g) “contacting state”,–Means a country party to the Madrid Protocol. The definition is obvious. Once India joins the Madrid Protocol, it will be a Contracting State.
Clause (h) “international application”,–This international application would mean 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. The International application may relate only to goods and service covered by the basic application or registration.
Clause (i) “international Bureau”,–This refers to the International Bureau of the World Intellectual Property Organisation, Geneva (Switzerland) who is administering the Madrid System.
Clause (j) “international registration”,–This definition would refer to registration of a trade mark in the register of the International bureau effected under the Madrid Protocol.
Clause (k) “Madrid Agreement”,–Means the Madrid Agreement Concerning the International Registration of Marks adopted at Madrid on the 14th day of Aril, 1891, as subsequently revised and amended. This definition is obvious.
Under the Madrid Agreement, an applicant for the international registration of a mark must have already obtained registration of the mark in the country of origin (basic registration). Under the Madrid Protocol, an international application may be based on either a registration with the Office of origin (basic registration) or on an application for registration filed with that Office (basic application).
Clause (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. This definition is obvious.
Madrid Agreement was concluded in 1891. The Madrid Agreement and Madrid Protocol are independent, parallel treaties, with separate, but overlapping, memberships. The Madrid Protocol was adapted in 1989, with a view to introduce some new features into the system towards international registration of marks, mainly for the purpose of removing the difficulties, which prevented some countries from adhering to the Madrid Agreement. The following explanatory table highlights some of the differences.
| Under the Agreement | Under the Protocol |
|---|---|
| An international application must be based on a registration in the office of Origin | Application for international registration may be based even on an application filed with the office of origin. Registration in the country of origin is not a pre-requisite. |
| An application under the Agreement must be filed in French. | Application governed exclusively by the Protocol or both the Agreement and the Protocol may be filed in English, French or Spanish according to what is prescribed by the Office of origin. That is, the Office of origin is entitled to only one language, or to two languages, or may permit the applicant to choose between any of the three languages [Rule 6(1)(b)]. |
| The contracting party in which the applicant seeks protection has a period of 12 months within which to declare the protection cannot be granted to the mark in its territory. | The contracting party in which the applicant seeks protection may elect for a period of 18 months (instead of one year), and an even longer period in the case of opposition, within which to declare that protection cannot be granted to the mark in its territory [Article 5(2)(b) and (c)]. |
| Frees payable is, as per the Agreement | The Office of each contracting party may receive higher fees than under the Madrid Agreement. |
| This possibility does not exist under the Madrid Agreement. | An international registration which is cancelled, at the request of the office of origin, for example because the basic application has been refused or the basic registration has been invalidated within five years from the date of the international registration, may be transformed into national (or regional) applications in the respective contracting parties in which the international registration had effect, each benefiting from the date of the international registration and, where applicable, its priority date. |
| A country may declare, when acceding to the Agreement, that application of the agreement shall be limited to international registrations effected from the date on which its accession becomes effective. | Any State or intergovernmental organization may, when ratifying or acceding to the protocol, declare that no international registration effected under the Protocol before the date of entry into force of the Protocol with respect to that State or organization can be extended to it. Such a declaration cannot be dame subsequent to ratification or accession [article 14(5)]. |