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FILING INTERNATIONAL APPLICATION UNDER MADRID PROTOCOL

 

INDIAN IP LAWS

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TRADEMARKS
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MADRID PROTOCOL
FILING INTERNATIONAL APPLICATION UNDER MADRID PROTOCOL
HOW TO FILE INTERNATIONAL APPLICATION DESIGNATING INDIA UNDER MADRID PROTOCOL
MADRID PROTOCOL PROVISIONAL REFUSAL IN INDIA

SAARC IP LAWS

INTERNATIONAL IP LAWS

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How to file International Application Under Madrid Protocol?

  • The Applicant desirous of filing International Application Under Madrid Protocol has to file its application in the prescribed form with requisite handling fee with the Indian Trade Marks Registry (hereinafter referred to as “TMR”)

  • The Applicant must fulfill one of the following conditions

  1. The Applicant should be a national of India, or hould be a national of India, or

  2. The Applicant should be domiciled in India, or

  3. The Applicant should have a real and effective business or commercial establishment in India.

  • For filing an International Application under Madrid Protocol, the Applicant must have a Basic application or registration.

  • Basic application or registration means the application or registration which is pending or registered (as the case may be) with TMR.

  • The International Application must have the same trade mark as mentioned in the national trade mark application or registration.

  • The list of goods and services mentioned in the international application should be identical with or no wider than that of the basic (national) mark.

  • The Applicant in the International Application will designate one or more other member countries of the Madrid Protocol, where the applicant wishes to protect his mark.

  • If the application is submitted through a registered trademark agent or attorney, a duly executed Power of Attorney on form TM-48 in favour of the said agent/attorney shall be attached with the International Application by the person filing the International Application.

VERIFICATION OF INTERNATIONAL APPLICATION UNDER MADRID PROTOCOL BY TRADE MARKS REGISTRY

How is International Application under Madrid Protocol verified by Indian Trade Marks Registry?

On receipt of International Application from the Applicant, the Indian Trade Marks Registry (hereinafter referred to as “TMR”) shall verify the following details:-

  • The Applicant of the International Application is the national of India, or his principal place of business as mentioned in the basic application/registration, is in India.

  • The Applicant of the International Application is the same person as the applicant of the basic application or proprietor of the trademark under the basic application/ registration .

  • Basic Application/registration mentioned in International Application subsists in the TMR records, and is not withdrawn, abandoned, refused, removed, cancelled.

  • The trademark mentioned in the International Application correspond with those in the basic application or Registration.

  • That the goods or services in the International Application are covered by the list of goods or services of the basic application or Registration.

  • An International Application for series mark cannot applied under Madrid protocol.

  • If an international application is to be based on series marks, registered or applied for registration in India, the Applicant will have to choose one of the marks in the series to act as the basis for his international mark.

  • If an Applicant wishes to register all the marks in series internationally, he must file a separate application for each one.

VERIFICATION AND TRANSMISSION OF INTERNATIONAL APPLICATION UNDER MADRID PROTOCOL

How International Application under Madrid Protocol is is verified?

What is the procedure followed by Indian Trade Marks Registry for verification of International Application under Madrid Protocol?

How is International Application under Madrid Protocol transmitted to International Bureau of WIPO?

  • The Indian Trade Marks Registry (hereinafter referred to as “TMR”) shall verify the International Application under Madrid Protocol.

  • If verification of International Application under Madrid Protocol reveals any deficiency, the TMR shall send a letter notifying about the deficiency to the Applicant or its authorized registered trade mark agent.

  • The Applicant is required to rectify the deficiency(s) in the International Application under Madrid Protocol within a period of one (1) month from the date of receipt of letter.

  • If the deficiency is not rectified, a refusal letter shall be sent to the applicant/agent/attorney as the case may be.

  • If however, the irregularities are rectified after the period of one month from the date the irregularities were communicated or even after the refusal letter from the office, the designated officer of TMR shall modify the application.

  • If the International Application is properly filed or irregularities, if any, are rectified the International Application shall be moved for certification.

  • International Applications found to be proper in all respects will be certified.

  • All certified applications will be transmitted to the IB of WIPO by TMR.

  • An alert will be sent to the applicant or his registered trade mark concerned at his email informing about such transmission of his application and the amount of fee to be paid by him directly to the WIPO.

PROECDURE FOR RECEIVING IRREGULARITIES FROM WIPO AND RESPONDING TO THEM

What is the procedure for receiving irregularities from IB of WIPO?

How to overcome irregularities received from IB of WIPO?

How to respond to irregularities received from IB of WIPO?

  • After receiving International Application from Indian Trade Marks Registry (hereinafter referred to “TMR”), the International Bureau of the WIPO (hereinafter referred to as “IB of WIPO”) shall verify if the said application.

  • If on verification, the IB of WIPO finds any irregularity(s), it shall notify such irregularity(s) to the applicant/applicant’s authorised representative as well as to the TMR.

  • The designated officer of the TMR will generate a letter and send the same to the Applicant of the International Application requiring the Applicant to rectify the irregularities of the applicant’s part within the period of one month from the date of such communication.

  • The Applicant/agent/attorney as the case may be, shall respond to the official communication relating to irregularities within the stipulated period.

  • The response of the Applicant received shall be considered by the officer concerned of TMR.

  • On receipt of the satisfactory response from the Applicant of the International Application and on payment of requisite individual fees, the IB of WIPO shall register the International Application and publish the International Registration in the WIPO Gazette.

REGISTRATION AND FORWARDING INTERNATIONAL REGISTRATION TO DESIGNATED COUNTRIES How to International Application registered?

How is International Registration forwarded to designated countries?

  • On receipt of satisfactory response from the Applicant of the International Application and on payment of requisite individual fees, the IB of WIPO shall register the International Application and publish the International Registration in the WIPO Gazette.

  • On registration, the International Application under Madrid Protocol is then forwarded by International Bureau of WIPO to the countries designated in the International Registration.

  • The designated countries shall issue a national application number to the International Registration and prosecute the application as per their respective local laws for time being in force.

EXAMINATION OF INTERNATIONAL REGISTRATION UNDER MADRID PROTOCOL IN DESIGNATED COUNTRIES

What is the procedure for examination of International Registration in designated countries?

What is the procedure for overcoming refusals notified by IP Office of designated countries of International Registration?

  • The designated countries in the International Registration shall examine the International Registration as per their respective local laws.

  • In case the mark contained in the international registration is refused registration by one or more than one designated country IP Office, a draft of the provisional refusal shall be generated by the IP Office of designated country and forward the same to IB of WIPO

  • The provisional refusal is recorded in the International Register by International Bureau of WIPO, together with an indication of the date on which the notification was sent. The provisional refusal is also published in the WIPO Gazette, with an indication as to whether the refusal is total (i.e. relates to all the goods and services covered by the designation) or partial.

  • The International Bureau then transmits a copy of the provisional notification to the holder of the International Registration.

  • On receipt of Notice of Refusal in respect of International Registration, the holder shall be given a stipulated period of to file a reply to the examination report/ office action.

  • A local representative in designated country who is familiar with the local laws and practice of designated country will have to be engaged by the holder of the International Registration for dealing with the office action.

  • After considering the response of the holder of the International Registration, the Examiner of designated country may accept or permanently refuse the International Registration.

  • If the International Registration is refused by the Examiner of designated country IP Office, the confirmation of the provisional refusal of the protection of the international registration shall be communicated to the International Bureau of WIPO who shall notify the permanent refusal to the holder of International Registration.

  • The International Registration which are accepted by the Examiner of designated country IP Office shall be advertised in a separate part of the Trade Marks Journal accordingly.

OPPOSITION AGAINST INTERNATIONAL REGISTRATION UNDER MADRID PROTOCOL in DESIGNATED COUNTRIES

How To Overcome Oppositions Filed Against International Registration Under Madrid Protocol in Designated Countries?

  • On receipt of the Notice of Opposition by the designated country IP Office, a provisional refusal based on opposition shall be sent to the international Bureau of the WIPO (hereinafter referred to as “IB of WIPO”) electronically along with the scanned copy of grounds of opposition.

  • The IB of WIPO transmits the provisional refusal based on opposition to the holder or his authorized agent.

  • If the holder wants to defend his international registration in India, it shall file counter statement.

  • A local representative in designated country who is familiar with the local laws and practice of designated country will have to be engaged by the holder of the International Registration.

  • If no reply or counterstatement is received on behalf of the holder within the prescribed time, the International Registration shall be refused protection and the provisional refusal communicated to the WIPO shall be confirmed and a notification shall be sent to the WIPO electronically.

  • If the holder of International Registration submits a counter statement, the same shall be sent electronically to the opponent or his agent.

  • After completion of the all the proceedings before the designated country IP Office. If the Registrar of Trade Marks has decided to confirm such refusal of protection of the mark for all the goods or services for which the protection has been requested, a notification of confirmation to the provisional refusal shall be sent to the International Bureau of WIPO.

  • Where no notification of provisional refusal was communicated to the WIPO and all procedures before the office (i.e. examination & opposition) is completed and there is no ground to refuse the protection of the international registration, a notification as to grant of protection shall be sent to the International Bureau of WIPO .

  • All international registrations for which protection have been granted in designated country IP Office shall be published in the ensuing issue of the Trade Mark Journal.

RENEWAL OF INTERNATIONAL REGISTRATION DESIGNATING UNDER MADRID PROTOCOL IN DESIGNATED COUNTRIES

How To Renew International Registration Designating Under Madrid Protocol in Designated Countries?

  • The registration of a mark at the International Bureau of WIPO (hereinafter referred to as “IB of WIPO”) is for a period of 10 years. It is then renewable for a further 10 years upon payment of the required fees

  • The request for renewal of the International Registration is to be made by the holder with IB of WIPO on a prescribed form with requisite fees.

  • On the request made by the holder of the international registration for its renewal and after receipt of the renewal fee, the IB of WIPO records the renewal in the International Register, with the date on which it was due, even if the fees required were paid within the grace period of six months after the due date.

  • The effective date of the renewal is the same for all designations contained in the international registration, irrespective of the date on which such designations were recorded in the International Register.

  • Where the international registration has been renewed, the International Bureau so notifies the Offices of the designated Contracting Parties concerned and sends a certificate to the holder.

  • The relevant data concerning the renewal are published in the Gazette. The publication is in effect a republication of the international registration, in the form at which it stands after renewal.

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