36A. Application of Act in case of international registration under Madrid Protocol.—The
provisions of this Chapter shall apply to international applications and international registrations under
the Madrid Protocol.
36B. Definitions.—In this Chapter, unless the context otherwise requires,—
(a) ―application‖, in relation to a Contracting State or a Contracting Organisation, means an
application made by a person who is a citizen of, or is domiciled in, or has a real and effective
industrial or commercial establishment in, that Contracting State or a State which is a member of that
Contracting Organisation, as the case may be.
Explanation.—For the purposes of this clause, ―real and effective industrial or commercial
establishment‖ means and includes any establishment where some bona fide industrial or commercial
activity takes place and need not necessarily be the principal place of business;
(b) ―basic application‖ means an application for the registration of a trade mark filed under
section 18 and which is used as a basis for applying for an international registration;
(c) ―basic registration‖ means the registration of a trade mark under section 23 and which is used
as a basis for applying for an international registration;
(d) ―Common Regulations‖ means the Regulations concerning the implementation of the Madrid
Protocol;
(e) ―Contracting Organisation‖ means a Contracting Party that is an intergovernmental
organisation;
(f) ―Contracting Party‖ means a Contracting State or Contracting Organisation party to the
Madrid Protocol;
(g) ―Contracting State‖ means a country party to the Madrid Protocol;
(h) ―international application‖ means an application for international registration or for extension
of the protection resulting from an international registration to any Contracting Party made under the
Madrid Protocol;
(i) ―International Bureau‖ means the International Bureau of the World Intellectual Property
Organisation;
(j) ―international registration‖ means the registration of a trade mark in the register of the
International Bureau effected under the Madrid Protocol;
(k) ―Madrid Agreement‖ means the Madrid Agreement Concerning the International Registration
of Marks adopted at Madrid on the 14th day of April, 1891, as subsequently revised and amended;
(l) ―Madrid Protocol‖ means the Protocol relating to the Madrid Agreement Concerning the
International Registration of Marks adopted at Madrid on the 27th day of June, 1989, as amended
from time to time.
36C. Trade Marks Registry to deal with international applications.—Notwithstanding anything
contained in sub-section (3) of section 5, an international application shall be dealt with by the head office
of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by
notification in the Official Gazette, specify.
36D. International application originating from India.—(1) Where an application for the
registration of a trade mark has been made under section 18 or a trade mark has been registered under
section 23, the applicant or the registered proprietor may make an international application on the form
prescribed by the Common Regulations for international registration of that trade mark.
1. Ins. by Act 40 of 2010, s. 5 (w.e.f. 8-7-2013).
23
(2) A person holding an international registration may make an international application on the form
prescribed by the Common Regulations for extension of the protection resulting from such registration to
any other Contracting Party.
(3) An international application under sub-section (1) or sub-section (2) shall designate the
Contracting Parties where the protection resulting from the international registration is required.
(4) The Registrar shall certify in the prescribed manner that the particulars appearing in the
international application correspond to the particulars appearing, at the time of the certification, in the
application under section 18 or the registration under section 23, and shall indicate the date and number of
that application or the date and number of that registration as well as the date and number of the
application from which that registration resulted, as the case may be, and shall within the prescribed
period, forward the international application to the International Bureau for registration, also indicating
the date of the international application.
(5) Where at any time before the expiry of a period of five years of an international registration,
whether such registration has been transferred to another person or not, the application under section 18
or the registration under section 23, as the case may be, has been withdrawn or cancelled or has expired or
has been finally refused in respect of all or some of the goods or services listed in the international
registration, the protection resulting from such international registration shall cease to have effect:
Provided that where an appeal is made against the decision of registration and an action requesting for
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 into withdrawal,
cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of
the international registration.
(6) The Registrar shall, during the period of five years beginning with the date of international
registration, transmit to the International Bureau every information referred to in sub-section (5).
(7) The Registrar shall notify the International Bureau the cancellation to be effected to an
international registration keeping in view the current status of the basic application or the basic
registration, as the case may be.
36E. International registrations where India has been designated.—(1) The Registrar shall, after
receipt of an advice from the International Bureau about any international registration where India has
been designated, keep a record of the particulars of that international registration in the prescribed
manner.
(2) Where, after recording the particulars of any international registration referred to in
sub-section (1), the Registrar is satisfied that in the circumstances of the case the protection of trade mark
in India should not be granted or such protection should be granted subject to conditions or limitations or
to conditions additional to or different from the conditions or limitations subject to which the international
registration has been accepted, he may, after hearing the applicant if he so desires, refuse grant of
protection and inform the International Bureau in the prescribed manner within eighteen months from the
date on which the advice referred to in sub-section (1) was received.
(3) Where the Registrar finds nothing in the particulars of an international registration to refuse grant
of protection under sub-section (2), he shall within the prescribed period cause such international
registration to be advertised in the prescribed manner.
(4) The provisions of sections 9 to 21 (both inclusive), 63 and 74 shall apply mutatis mutandis in
relation to an international registration as if such international registration was an application for
registration of a trade mark under section 18.
(5) 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.
(6) Where a registered proprietor of a trade mark makes an international registration of that trade
mark and designates India, the international registration from the date of the registration shall be deemed
24
to replace the registration held in India without prejudice to any right acquired under such previously held
registration and the Registrar shall, upon request by the applicant, make necessary entry in the register
referred to in sub-section (1) of section 6.
(7) A holder of international registration of a trade mark who designates India and who has not been
extended protection in India shall have the same remedy which is available to any person making an
application for the registration of a trade mark under section 18 and which has not resulted in registration
under section 23.
(8) Where at any time before the expiry of a period of five years of an international registration,
whether such registration has been transferred to another person or not, the related basic application or, as
the case may be, the basic registration in a Contracting Party other than India has been withdrawn or
cancelled or has expired or has been finally refused in respect of all or some of the goods or services
listed in the international registration, the protection resulting from such international registration in India
shall cease to have effect.
36F. Effects of international registration.—(1) From the date of the international registration of a
trade mark where India has been designated or the date of the recording in the register of the International
Bureau about the extension of the protection resulting from an international registration of a trade mark to
India, the protection of the trade mark in India shall be the same as if the trade mark had been registered
in India.
(2) The indication of classes of goods and services given by the applicant shall not bind the Registrar
with regard to the determination of the scope of the protection of the trade mark.
36G. Duration and renewal of international registration.—(1) 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.
(2) 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.]