S. 4. Amendment of Section 23.—In section 23 of the principal Act, in Sub-section (1), after the words “register the said trade mark”, shall be inserted.
Where an application has not been opposed and time limit for filing of opposition has expired; or where the application has been opposed and the opposition has been decided in favor of the applicant, the Registrar Shall register the said trade mark, unless the Central Government otherwise directs. However, there was no time limit for registration of the mark, where there is no third party opposition.
The amendment to section 23 prescribes a time limit of 18 months for registration of trade mark from the date of filing of application. This gives Effect to the requirements of the Madrid Protocol.
Position under the Madrid Protocol
The contraction party (in the case of India, the Trade Marks Registry, India) will examine the application for international registration in the same way as an application for registration of trade mark filed directly. If there are any grounds of objection to the registration based on any of the provisions of the Trade Marks Act, 1999, or if an opposition is filed under section 21 of the Act, the Registry may declare that protection cannot be granted to the mark in the country. This implies that the office is not to wait till a final decision is taken about the acceptance of the application.
Any objection to the registration of the mark either on the basis of lack of distinctiveness or on relative grounds based on prior application / registration of the same or similar mark, will entail “provisional refusal”. It shall be communicated to the international bureau by India as quickly as possible and in any case within the time specified in the Protocol.
Though the time limit in this behalf is prescribed 12 months in Protocol, it is open to the contracting party to declare that it opts to have a period of 18 months. It is evident from the amendment made to section 23 that India has exercised its option to utilize the maximum period of 18 months allowable under the Protocol.
The Protocol also permits a contracting party which has made the above declarations to further declare that a “provisional refusal” may be notified even after the expiry of 18 months period, when there is an opposition filed by a third party under section 21 of the Act. The opposition proceedings under the Act are quasi-judicial involving filing of counter statement by the applicant and the evidence by both the parties in support of their cases and finally a hearing of the case by the Registrar before order is issued. During the proceedings matters of interlocutory nature may also arise, sometime giving rise to appeal proceedings to Appellate Board and other judicial hierarchy.
The “provisional refusal” as may be communicated by India, wherever necessary, will be recorded in the international register and published in the gazette. A copy thereof will be transmitted to the holder of the international registration.
Procedure after” provisional refusal”
Proceedings subsequent to the communication of the “provisional refusal” such as opposition, appeal or review, etc. will be carried out directly between the holder of International registration and the Trade Marks Registry in India, without any involvement of the international bureau. However, the office must send a statement to the international bureau once all the procedures before that office have been completed, either intimating that the “provisional refusal” has been totally or partially withdrawn or confirming that the “provisional refusal” has been upheld. This statement will then be recorded in the international register and published in the gazette.
When there are no objections
In cases where an international application is free from office objection or opposition by third parties under section 21, the Trade Marks Registry may, before the expiry of time limit prescribed for “provisional refusal”, issue a statement of grant of protection, without waiting for the permissible maximum period of 18 months. Such statement is recorded in the international register and published in the gazette. A copy is transmitted to the right holder. However, it is not obligatory to any contracting party (including India) to issue a positive decision on registration and there are no legal consequences if it does not do so.