Trade Mark (Amendment) Act, 2010
The Trade Marks (Amendment) Bill was passed by the Parliament and assented to by the President on 21st September 2010. The Trade Marks (Amendment) Rules, 2013 have been made to give effect to the Trade Mark (Amendment) Act 2010. By notification dated 8th July 2013, the Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules, 2013 came in to force to enable India to accede to the Madrid Protocol. The Madrid Protocol is a simple, facilitative and cost effective system for registration of international trade marks. India’s membership of the protocol has enabled Indian companies to register their trade marks in Member Countries of the Protocol through filing a single application in one language and by paying one-time fee in one currency.
Amendment of Section 11:
The explanation for clause (a) under section 11 is substituted as follows:
“(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 36E 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;”
One of the major changes brought about by the amendments include Section 23(1) (b) wherein the registration process for a mark is to be completed in a time bound manner “within eighteen months of the filing of the application”. This change will challenge every aspect of the registration process within the Trademark Office in India, forcing deadlines at every stage of the registration procedure laid out under the Trademarks Act and supplemented by the Trademark Rules in India.
A four month period has been given by the new amendment in Section 21 & in Rule 47(1) of the Act and Rules for filing notice of opposition from the date of the advertisement or re-advertisement. The sub-Rule (6) of Rule 47 & Form TM-44 have been omitted.
Under the new amendments, the concept of textile goods and textile trade marks (consisting exclusively of numerals or letters) has come to an end by omitting Chapter X of the principal Act & Part IV and Part VI of Chapter VII of the Trade Marks Rules, 2002 have also been omitted along with Form TM-22 and Form TM-45.
Another major amendment is the insertion of a new Chapter IVA in the principal Act and Chapter IIIA in the Rules in light of international applications and registrations under the Madrid Protocol which have following major elements:
- The Trade Marks Act, 1999 is applicable to the international applications and international registrations under the Madrid Protocol (S.36A).
- A new interpretation/definition clause has been inserted in accordance with the Madrid Protocol (S.36B read with Rule 67A).
- Applicant or registered proprietor of trademark under section 18 or under section 23 (‘basic application’ or ‘basic registration’) of the Act may make an international application in Form MM2(E) along with prescribed fees in Swiss francs. The Registrar shall certify & forward it to the International Bureau within two months from the date of receipt of the said application & for this, a fee of INR 2000 is payable to the Registrar towards handling charges (S. 36D read with Rule 67E & 67F).
- A separate record for international registration where India has been designated shall be kept by the Registrar called the ‘Record of Particulars of International Registration (S. 36E read with Rule 67G).
- For a period of five years from the date of an international registration, if the initial basic national application/registration ceases to have effect, through a withdrawal, refusal, cancellation following a decision of the Office of origin, or Court, or voluntary cancellation, or non-renewal, the international registration will no longer be protected. After the expiry of a period of five years from the date of international registration, the registration becomes independent of the basic registration or basic application (S.36D & S.36E).
- Provided that, where an appeal is made against the decision of registration and an action requesting 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 in withdrawal, cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of the international registration. (Provision of Sub-section 5 of Section 36D).
- The Registrar shall examine the application within 2 months where India has been designated. If grounds for objection are found during the examination by the Registrar, or if an opposition is filed, the Registrar can declare a provisional refusal (within 18 months of receipt of the application’s notification from the International Bureau for India) for protection of the mark in that member country (S.36E read with Rule 67H).
- 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 (S.36E).
- The international registration of a trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period of ten years from the expiry of the preceding period and subject to payment of a surcharge prescribed by the rules, a grace period of six months shall be allowed for renewal of the international registration (s. 36G).