AIPPI FORUM AND EXCO 2011 14 TH OCTOBER 2011 INDIA AND THE MADRID PROTOCOL

1. AIPPI FORUM AND EXCO 201114TH OCTOBER 2011INDIA AND THE MADRID PROTOCOL HIMANSHU W. KANE Advocate & Solicitor W. S. Kane & Company

2. MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF TRADE MARKS • The Madrid System comprises of - (1) Madrid Agreement,1891 and (2) Madrid Protocol, which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996. • Any State which is a party to the Paris Convention may become a party to the Madrid Agreement or the Madrid Protocol or both. • India is Party to the Paris Convention w.e.f. December 07, 1998. W. S. Kane & Company

3. INDIA - Gearing up for Madrid Protocol • February 08, 2007: the Union Cabinet ratified India’s accession to the Madrid Protocol. Intention to join only the Madrid Protocol for the international registration of trademarks and not the Madrid agreement. • December 18, 2009 : The House of the People (Lok-sabha) of the Indian Parliament passed the Trade Marks (Amendment) Bill, 2009. • August 10, 2010 : The Council of States (Rajya-sabha) of the Indian Parliament, passed the Trade Marks (Amendment) Bill, 2009 • September 21, 2010 : The Trade Marks (Amendment) Act 2010 received the assent of the President of India and was published in the Gazette of India, Ext., Pt. II, S.1, dated September 22, 2010. • It will come into force on such future date as the Central Government may, by notification in the Official Gazette, appoint. W.S. Kane & Company

4. STATEMENT OF OBJECTS AND REASONS • To facilitate Indian and foreign nationals to secure simultaneous protection of trade marks in other countries. • Simple • Cost-effective • Facilitative • Single Application • One Fee • One Language • Enables the nationals of Member countries of the Protocol to obtain protection of trade marks within a prescribed period of 18 months. W.S. Kane & Company

5. AMENDMENTS TO THE EXISTING LAW IN A NUTSHELL • Section 11: Definition of “earlier trade mark” has been broadened • Sections 36-A to 36-G: A new Chapter IV-A relating to protection of international registration of trade marks under the Madrid Protocol. • Section 23: Completion of registration proceedings in 18 months. W.S. Kane & Company

6. Section 36D W.S.Kane & Company

7. International Registration Where India is Designated – Section 36E W.S.Kane & Company

8. International Registration where India is Designated – Section 36E W.S.Kane & Company

9. INTERNATIONAL REGISTRATION CEASES TO HAVE EFFECT W.S.Kane & Company

10. Effect and Duration of International Registrations Sections 36F & 36G W.S.Kane & Company

11. AMENDMENT TO SECTION 23 • (Registration) • Completion of the registration proceedings in cases where opposition proceedings are over or time to file the opposition has expired : 18 months • Streamlining the process of trade mark registration • Forcing stricter compliance with time limits / deadlines at every stage of the registration procedure W. S. Kane & Company

12. AMENDMENT TO SECTION 11 (Relative Grounds for refusal of Registration) Explanation – For the purposes of this Section, earlier trade mark means: "(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 36-E 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;". • COMMENT Definition of “Earlier Trade Mark” has been broadened . W. S. Kane & Company

13. POINTS TO PONDER OVER…. • ADDRESS FOR SERVICE? • APPROPRIATE OFFICE? • DIFFERENT COUNTRIES, DIFFERENT CRITERIA • Proof of Use • Specification of goods & services • Deceptive Similarity etc. W.S. Kane & Company

14. POINTS TO PONDER OVER…. • MADRID CENTRIC • CENTRAL ATTACK • REGISTRY’S COMMUNICATION FAILURE • UNDERSTANDING DISTINCTIVE CHARACTER • RULES TO BE FRAMED W.S. Kane & Company

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