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HOW TO FILE INTERNATIONAL APPLICATION DESIGNATING INDIA UNDER MADRID PROTOCOL

 

INDIAN IP LAWS

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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

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RECEIVING INTERNATIONAL REGISTRATIONS DESIGNATING INDIA UNDER MADRID PROTOCOL

  • The International Application received by International Bureau of WIPO (hereinafter referred to as “IB of WIPO”) from Office of Origin is scrutinized to ascertain its compliance with the necessary requirements of The Madrid Protocol, and their Common Regulations.

  •  After examination of International Application, the mark is recorded in the International Register. The International Registration is then published in the WIPO Gazette of International Marks, and notified to each designated Contracting Party.

  •  The Indian Trade Marks Registry (hereinafter referred to as “TMR”) is notified by IB of WIPO if India is designated in the International Application.

  •  The details of all the notifications as to new International Registrations Designating India shall be recorded in computer database of the TMR,

  •  In case the mark contains figurative elements, the TMR office will complete the codification as per Vienna Classification by adding ‘Sections’ as the third level of codification, if the same is not notified to us.

  •  The filing date of an IRDI in the system of TMR shall be the date of international registration.

  •  A reference No. like IRDI/…(Number)…shall be generated by TMR for each international registration

EXAMINATION OF INTERNATIONAL REGISTRATION DESIGNATING INDIA UNDER MADRID PROTOCOL

How to are International Registration Designating India (IRDI) Under Madrid Protocol Examined?

  •  The Indian Trade Marks Registry (hereinafter referred to as “TMR”) shall examine the International Registrations Designating India (IRDI) as per the provisions of the Indian Trade Marks Act, 1999 and Rules made thereunder.

  • In case of IRDI regarding collective or certification mark, the Examiner shall look for draft regulations and examine the IRDI as per relevant provisions of the Trade Marks Act 1999 & Trade Marks Rules 2002.

  •  In case the mark contained in the international registration is refused registration, a draft of the provisional refusal shall be generated by the Examiner concerned.

  •  The status of the IRDI shall be changed as “Objected” and a provisional refusal based on ex officio examination, shall be communicated to the International Bureau 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.

MADRID PROTOCOL (IRDI) REFUSAL IN INDIA

How To File Reply To Examination Report/ Office Action?

How to Overcome Refusal of International Registration Designating India (IRDI) Under Madrid Protocol?

  •  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.

  •  The holder of the international registration has the same rights and remedies as if the application has been filed directly in India.

  •  A local representative in India who is familiar with the Indian law and practice of TMR will have to be engaged by the holder of the International Registration for dealing with the office action.

  •  The holder of the international registration may also amend his international application at the level of International Bureau of WIPO (hereinafter referred to as “IB of WIPO”) by deleting goods/services or by otherwise limiting the scope of registration to overcome the provisional refusal. Such amendment may be received through the notification from WIPO.

  •  Any amendment or limitation requested by the holder of the international registration, if permissible as per the Trade Marks law, shall be incorporated in Record of Particulars of International Registration, through the system.

  •  A show cause hearing shall be fixed, if required, and the same shall be conducted by a designated officer of TMR.

  •  After considering the response of the holder of the International Registration and after giving an opportunity of being heard, the Examiner of TMR may accept or permanently refuse the IRDI.

  •  If the IRDI is refused by the Examiner of TMR, 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 IRDI which are accepted by the Examiner of TMR are advertised in a separate part of the Trade Marks Journal accordingly

PUBLICATION OF INTERNATIONAL REGISTRATION DESIGNATING INDIA (IRDI) UNDER MADRID PROTOCOL IN INDIAN TRADE MARKS JOURNAL

HOW IS INTERNATIONAL REGISTRATION DESIGNATING INDIA (IRDI) UNDER MADRID PROTOCOL PUBLISHED IN INDIAN TRADE MARKS JOURNAL?

 

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 which shall contain following particulars-

  •  IRDI No

  •  International Registration No

  •  Date of International Registration

  •  Priority detail, if any

  •  Reproduction of the trademark

  •  Transliteration and Translation of the trademark in English, if the mark is in non-English characters

  •  Nature & Description of the trademark like standard character, colour mark, three dimensional or packaging of goods

  •  Nature & Description of International Registration like certification mark or collective mark

  •  The name and address of the holder of the international registration

  •  The name and address of the holder’s represenative in India

  •  Class(es) and corresponding description of goods and services

  •  Statement as to use of the trademark in India

  •  Limitation & Conditions of International Registration desired by the holder or imposed by the TMR and agreed to by the holder

OPPOSITION AGAINST INTERNATIONAL REGISTRATION DESIGNATING INDIA (IRDI) UNDER MADRID PROTOCOL

How To Overcome Oppositions Filed Against International Registration Designating India Under Madrid Protocol?

  • On receipt of the Notice of Opposition by the Indian Trade Marks Registry (hereinafter referred to as “TMR”)I, 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 notification as to provisional refusal based on opposition shall, in addition to other information, containing a. the name and address of the opponent; b. where the opposition is based on a mark which has been the subject of an application or registration, a list of the goods and services on which the opposition is based; c. the period and manner of responding to the opposition; d. the fact that the holder of the international registration should engage a registered trademark agent or an advocate having address in India, as his agent by executing a Power of Attorney in the favour of the agent so engaged; e. the relevant provisions of the Trade Marks Act & Rules particularly relating to opposition proceedings.

  • 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 on form TM-6.

  •  In such case the holder shall engage a trademark agent/attorney having address in India by executing a Power of Attorney in the favour of the agent/attorney in the form TM-48.

  •  Such an authorized agent/attorney shall submit the counterstatement signed by the holder or a person authorized by him, and the Power of Attorney in the favour of the agent/attorney online through the system.

  •  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 IRDI submits a counter statement, the same shall be sent electronically to the opponent or his agent.

  •  The evidences, if any, on behalf of the holder of international registration, or on behalf of the opponent shall be received in pdf file format through the system.

  •  The opposition proceedings shall be conducted in usual procedure, as if an application submitted directly with the TMR is opposed; the international registration, however, shall not be treated as abandoned for the lack of prosecution.

  •  In case of the lack of prosecution, the designated officer concerned shall proceed ex parte, decide about the protection the international registration on merit and may confirm the provisional refusal.

  •  After completion of the all the proceedings before TMR. 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 through the system.

  •  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 India shall be published in the ensuing issue of the Trade Mark Journal. Such publication will consist of list of IRDI along with corresponding International Registration numbers. It should be noted that no registration certificate is issued with regard to international designations. The reason for this is that the mark has already received its “registration certificate‟ from WIPO when it was registered internationally, prior to being forwarded to India.

RENEWAL OF INTERNATIONAL REGISTRATION DESIGNATING INDIA (IRDI) UNDER MADRID PROTOCOL

How To Renew International Registration Designating India (IRDI) Under Madrid Protocol?

  • 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.

INTERNATIONAL REGISTRATION UNDER MADRID PROTOCOL SUBSEQUENTLY DESIGNGATING INDIA

How to subsequently designate India in International Registration under Madrid Protocol?

What is “Subsequent Designation” Under Madrid Protocol?

Can India be Subsequently Designated In all the International Registrations Under Madrid Protocol?

When will an International Registration Under Madrid Protocol Be Effective In India?

How to overcome Irregularity of Subsequent Designations?

  •  Subsequent Designation is a process by which a holder of International Registration is permitted to designate other member states of Madrid Protocol which were not designated earlier i.e.at the time of filing of International Application.

  •  Madrid Protocol for International System for Registration of Trade Marks came into force into India on July 08, 2013 and thus, India (IN) can only be subsequently designated in those International Registrations which were filed on or after July 08, 2013.

  •  The holder of International Registration may present the subsequent designation either directly to the International Bureau or through the Office of the Contracting Party of the holder. However, the subsequent designation must be presented to the International Bureau by the Office of the Contracting Party of the holder where any of the Contracting Parties to which it relates is a country which is designated under the Agreement.

  •  A subsequent designation which is presented by the holder directly to the International Bureau will bear the date on which it was received by the International Bureau.

  •  If the International Bureau of WIPO considers that there is an irregularity regarding the subsequent designation, it will so notify the holder. Where the subsequent designation was presented by an Office, it will also notify the Office.

  •  If the irregularity is not remedied within three (3) months from the date of the notification by the International Bureau, the subsequent designation will be considered abandoned. In particular, where the irregularity lies in the fact that a declaration of intention to use the mark is missing or defective and such irregularity is not remedied within the prescribed period of three months, it should be noted that the entire subsequent designation will be considered abandoned.

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