Things to know while designating India under madrid system – Eshwars
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Things to know while designating India under madrid system

[First published in Lexology on 7th December 2018. To read Article in Lexology Click here]

MS. SRIVIDYA SUNDARESAN

HEAD – TRADEMARK & COPYRIGHT PRACTICE

MS. SHYAMOLIMA SENGUPTA

SENIOR ASSOCIATE – TRADEMARK & COPYRIGHT PRACTICE

BACKGROUND:

India acceded to the Madrid Protocol for the International Registration of Trademarks (“Madrid Protocol”) and the same came into force on the July 8, 2013 in India. Trademark laws and other IPR laws are very important legislations that have a significant impact on the socio-economic and business climate in a country and the accession by India to the Madrid Protocol has undoubtedly added thrust to India’s growth story in the past few years. It is a recognized fact that India has been one of the fastest-growing economies in the world over the past decade.

Transnational corporations exploring to increase their business footprint in India have been largely benefitted by India’s accession to the Madrid Protocol and this is apparent from the fact that there has been a steady raise in the International Applications designating India under the Madrid Protocol. Not only has this increased multi-national companies from outside India filing trademark applications in India but this has also triggered Indian entities looking to expand their business presence outside India to reap the benefits of such unified system of international filing of trademark applications. Prior to India’s accession business houses had to largely depend upon the traditional system of filing either national applications or convention applications based on bilateral and reciprocal arrangement treaties that were time consuming. In this article we will discuss the various factors that a business house needs to take into account while filing trademark applications in India under the Madrid Protocol.

Though the Madrid System has simplified the trademark registration process in terms of time and cost, however, one should be aware of certain important aspects of the trademark law as well as the procedural aspects followed in India in order to reduce the chances of an application receiving provisional refusals from the Indian Trademarks Registry (“Indian TMR”) that could lead to significant delays in the process of registration of a trademark in India.

Are you using appropriate tool for conducting the Trademark Search in India?

While selecting the search tool, it has to be ensured that the results as thrown by the tool not only covers the similar trademarks that are already registered with the TMR, but it also covers the similar marks that are pending for registration. For an instance, the search results provided by the EUIPO’s TM View Search Tool, which is linked with the Indian TMR database, covers only the registered trademarks and not the trademarks that are removed due to non-renewal or pending for registration. Hence, be cautious while selecting the search tool for conducting the trademark search in India to avoid provisional refusal under Sections 9 and 11 of the Trademarks Act, 1999 (“Act”) and also opposition from the third parties. In this regard it is strongly advisable to run a preliminary search in the online database of the Indian TMR maintained in the portal www.ipindia.nic.in with the help of a local attorney.

Check whether your Trademark attracts any of the Absolute Grounds for Refusal:

As per the Indian Trademarks Act, if a trademark is non-distinctive and/or descriptive, it falls under Absolute grounds for Refusal pursuant to Sections 9(1)(a) and 9(1)(b). However, if your Trademark has acquired distinctiveness by extensive usage in India well before the date of Application or the trademark has attained well-known status in India, the Trademark shall not be refused registration as per proviso to Section 9(1) of the Act.

Indian TMR allows co-existence of identical Trademark under same class:

Is your Trademark similar to the Trademark(s) already applied or registered in the same relevant class under which you are proposing to register?

  • The objection under Section 11 can be resolved by obtaining consent letter from the proprietor of the similar marks under the same relevant class.
  • By adducing documents proving honest, bonafide and concurrent usage of the mark.
  • By providing specific description of goods or services in the Application to differentiate your list of goods or services from that of the existing similar Trademarks.

In this context it is strongly advisable to conduct a pre-application search in India as this will help the applicant strategies the filing of the application appropriately after understanding the various issues that may probably be faced by a trademark once it is filed in India that may potentially also help in avoiding unnecessary costs and delays at a later point of time.

How to avoid provisional refusal in respect of description of goods and services?

The WIPO “Madrid Goods & Service” tool facilitates us in understanding the acceptance of the description of goods or services under relevant classes in the respective country in order to avoid provisional refusal. However, the said tool does not cover India’s list of acceptable goods or services. Like the USPTO and other IP Offices, India also has its own list of acceptable goods and services entries “TM Class” in line with Nice classification and the same can be accessed through the link http://euipo.europa.eu/ec2/.

As the Indian TMR does not accept general class headings under the Nice Classifications and also the terms that are too broad or vague, it is advisable to check the proposed entries with the said ‘TM Class’ and accordingly amend the goods or services, without broadening the scope, in the International Application to avoid provisional refusal.

Wider Protection by registering a Mark without limiting its colours:

In India, if a Trademark is registered without limitation of colours (i.e., in black & white version), the registration extends for such trademark with any combination of colours. It is advisable to provide the basic Application number wherein the trademark is applied or registered in black & white while designating India in order to avail comprehensive protection.

How to claim usage in India when there is no provision in the International Application regarding usage date?

In India, ownership of a trademark is determined only on a ‘first-to-use’ basis. We observe that most of the trademarks published by the Indian TMR under the Madrid System in the Trademark Journal reflects the usage date as “Proposed to be used”. Is that due to Applicant’s or Attorney’s interpretation on Indian Trademarks Act, 1999, that the date of usage can be updated at a later date subsequent to registration of the trademark in the register of Indian TMR. Following are the facts that the Applicant should be aware in respect of usage date while designating India:

  • If the Applicant has inadvertently registered his trademark with the usage date as “Proposed to be used”, the same cannot be rectified at a later date upon registration despite the submission of adequate documents along with the Affidavit with the Indian TMR. A fresh Trademark Application with the actual usage date has to be filed with the Indian TMR to register the trademark with updated information.
  • As per the practice adhered by the Indian TMR, the date of usage as mentioned in the Trademark Application should be prior to the date of filing of Application. Though the Indian Trademarks Act does not preclude anyone from updating the usage date related information in respect of a Trademark, the Indian TMR, as a practice, does not allow the amendment of usage date in its records, if the proposed amended usage date is subsequent to the date of Application.
  • Amendment of usage date while renewing the registration of trademark is not applicable. Mere filing of requisite form along with the fee would suffice for renewal of registration in India irrespective of the fact that whether the trademark is actually in use in commerce or not.

In order to avoid above consequences, it is advisable to follow the below mentioned process to bring on record your actual commencement of usage before registering the Trademark under Madrid System:

  • Filing of “Declaration of Intent to use” along with the International Application. Applicants must provide information specified on the MM2 form (International Application) or the MM4 form (Subsequent Designation)
  • Checking the status of the International Application through Madrid Real Time Status to track the date on which the WIPO would be notifying the designated countries in respect of Application.
  • Checking the status of the Application in the Indian TMR database through the link http://ipindiaonline.gov.in/eregister/eregister.aspx.
  • Once the status of the Trademark appears as “Marked for Examination”, immediately the requisite form needs to be filed through your Attorney in India to amend the usage date (if it is prior to the Application date) along with the Affidavit and evidences proving usage of the trademark in India.

It is pertinent to note that the aforesaid process is applicable only if the commencement of usage of the trademark in India is prior to the date of Application and sufficient documents proving the commencement of usage in India could be adduced along with the aforementioned form. On perusal of the Form and supporting documents, the Indian TMR may either directly allow the said amendment and change the usage date in its records or may fix a hearing to allow the same.

Priority Claim:

In order to claim priority in India, it is essential that the Madrid application is filed well before the six months’ time period so that the International Bureau forwards the international application to the national office within the said period, failing which the national office will not consider the priority claim and move such application without priority.

Be vigilant if the Application is under Examination Stage:

International Registrations Designating India (IRDIs) are examined at the time when national applications with the filing date same as the date of international registrations of such IRDIS, are examined. If the Indian TMR raises any objection under the absolute and/or relative grounds for refusal or directs to provide or file any information or

documents during the examination stage, the time period for replying to the provisional refusal or examination report will be one month. The Applicant may seek extension of time to file Reply letter by submitting requisite form with the Indian TMR. However, only if the Registrar is satisfied with the reasons or circumstances provided therein, the extension of time shall be allowed accordingly. If the reply letter is not filed within the stipulated time period, the Application shall be deemed to be abandoned as per the Act.

As the reply to the provisional refusal must be filed through a local representative in India and also coupled with the fact that there is no prescribed time period until which the extension can be sought as per the Act, it is advisable to engage the Attorney in India immediately on receipt of Provisional Refusal or examination report to file the appropriate reply letter within one month.

Publication and Registration

If no objection for protection of the international registration is found at examination stage or if after considering the response of the holder or after a hearing, the international registration is proposed to be accepted for protection, the particulars of the international registration shall be published in a separate part of the Trade Marks Journal and will be open to third-party opposition for a period of 4 months. On expiry of the 4-month opposition period and in absence of any opposition, the mark shall be granted protection by the Indian Trademarks Registry.

Opposition

International designations are opposed in exactly the same way as national marks, that is, by filing form TM-O, together with a statement of grounds of opposition and a fee by the opponent himself (having address in India), or through a registered trademark agent or an advocate having address in India, who would represent and work on behalf of the opponent, before the Trade Marks Registry. If an opposition to protection of the international registration is received within the prescribed period after publication of an international registration in the trademark journal, the TMR shall communicate the provisional refusal based on opposition to the WIPO and dispose the opposition as per the relevant provisions of the Trade Marks Act & Rules and notify the final decision thereafter to the IB of the WIPO.

Renewal, Changes & Corrections in The International Registrations

The renewals of international registrations and amendments and corrections are done by the international bureau of the WIPO and the same shall be notified to the Indian Trademark Office by the WIPO. The registration of a mark at the International Bureau is for a period of 10 years. It is then further renewable for a further 10 years upon payment of the required fees. In case there is any objection in the corrections or amendments in the international registrations where India has been designated, the TMR office notifies its objections and in rest of cases the TMR office updates its records pertaining to international registrations concerned.

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