AIPPI FORUM AND EXCO 2011 14 TH OCTOBER

AIPPI FORUM AND EXCO 2011 14 TH OCTOBER 2011 INDIA AND THE MADRID PROTOCOL HIMANSHU W. KANE Advocate & Solicitor W. S. Kane & Company

MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF TRADE MARKS q The Madrid System comprises of - (1) Madrid Agreement, 1891 and (2) Madrid Protocol, which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996. q Any State which is a party to the Paris Convention may become a party to the Madrid Agreement or the Madrid Protocol or both. q India is Party to the Paris Convention w. e. f. December 07, 1998. W. S. Kane & Company

INDIA - Gearing up for Madrid Protocol q February 08, 2007 : the Union Cabinet ratified India’s accession to the Madrid Protocol. Intention to join only the Madrid Protocol for the international registration of trademarks and not the Madrid agreement. q December 18, 2009 : The House of the People (Lok-sabha) of the Indian Parliament passed the Trade Marks (Amendment) Bill, 2009. q August 10, 2010 : The Council of States (Rajya-sabha) of the Indian Parliament, passed the Trade Marks (Amendment) Bill, 2009 q September 21, 2010 : The Trade Marks (Amendment) Act 2010 received the assent of the President of India and was published in the Gazette of India, Ext. , Pt. II, S. 1, dated September 22, 2010. q It will come into force on such future date as the Central Government may, by notification in the Official Gazette, appoint. W. S. Kane & Company

STATEMENT OF OBJECTS AND REASONS q To facilitate Indian and foreign nationals to secure simultaneous protection of trade marks in other countries. üSimple üCost-effective üFacilitative üSingle Application üOne Fee üOne Language q Enables the nationals of Member countries of the Protocol to obtain protection of trade marks within a prescribed period of 18 months. W. S. Kane & Company

AMENDMENTS TO THE EXISTING LAW IN A NUTSHELL q Section 11: Definition of “earlier trade mark” has been broadened q Sections 36 -A to 36 -G: A new Chapter IV-A relating to protection of international registration of trade marks under the Madrid Protocol. q Section 23: Completion proceedings in 18 months. of registration W. S. Kane & Company

Section 36 D International Applications originating from India Basic Application/ Registration is must. Must Designate the Contracting parties where the protection resulting from International registration is required. Registrar after certifying the details corresponding to the basic application, forwards the International application to the International Bureau. Holder of International Registration can apply for extension of protection to any contracting party. W. S. Kane & Company

International Registration Where India is Designated – Section 36 E Keep a record Inform IB within 18 months about Refusal/Acceptance Sections 9 to 21, 63 & 74 – Mutatis Mutandis Advertisement in the Official Gazette No Opposition within time– notify IB within 18 months: Deemed Acceptance W. S. Kane & Company

International Registration where India is Designated – Section 36 E Continued. . International Registration shall replace the registration held in Indian, if any Designate India-pending registration: Same remedy available as pending domestic application in India W. S. Kane & Company

INTERNATIONAL REGISTRATION CEASES TO HAVE EFFECT Basic Application Withdrawn/ Cancelled/ Expired/ Refused 5 years Withdrawn/ Cancelled/ Expired/ Refused Basic Registration W. S. Kane & Company

Effect and Duration of International Registrations Sections 36 F & 36 G The protection of the trade mark in India shall be same as if the trade mark had been registered in India : Duration/ Renewal: From the date of the international registration of a trademark where India has been designated – From the date of recording in the register of IB about International registration extending protection to India Renewal after Every 10 Years Grace Period of Six months for renewal allowed. W. S. Kane & Company

AMENDMENT TO SECTION 23 (Registration) • Completion of the registration proceedings in cases where opposition proceedings are over or time to file the opposition has expired : 18 months • Streamlining the process of trade mark registration • Forcing stricter compliance with time limits / deadlines at every stage of the registration procedure W. S. Kane & Company 11

AMENDMENT TO SECTION 11 (Relative Grounds for refusal of Registration) Explanation – For the purposes of this Section, earlier trade mark means: "(a) a registered trade mark or an application under Section 18 bearing an earlier date of filing or an international registration referred to in Section 36 -E or convention application referred to in Section 154 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks; ". ü COMMENT Definition of “Earlier Trade Mark” has been broadened. W. S. Kane & Company

POINTS TO PONDER OVER…. q ADDRESS FOR SERVICE? q APPROPRIATE OFFICE? q DIFFERENT COUNTRIES, DIFFERENT CRITERIA 1. Proof of Use 2. Specification of goods & services 3. Deceptive Similarity etc. W. S. Kane & Company

POINTS TO PONDER OVER…. q MADRID CENTRIC q CENTRAL ATTACK q REGISTRY’S COMMUNICATION FAILURE q UNDERSTANDING DISTINCTIVE CHARACTER q RULES TO BE FRAMED W. S. Kane & Company

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