THE TRADE MARKS (AMENDMENT) ACT, 2010

1. Short title and commencement

2. Amendment of section 11

3. Amendment of section 21

4. Amendment of section 23

5. Insertion of new Chapter IVA

6. Substitution of new section for section 45

7. Omission of Chapter X

8. Amendment of section 150

9. Amendment of section 157

10. Power of Central Government to remove difficulties

THE TRADE MARKS (AMENDMENT) ACT, 2010

No. 40 OF 2010

 

[21st September, 2010.]

 

An Act to amend the Trade Marks Act, 1999.

 

BE it enacted by Parliament in the Sixty-first Year of the Republic of India as

follows:—

 

  1. Short title and commencement. - (1) This Act may be called the Trade Marks

(Amendment) Act, 2010.

 

(2) It shall come into force on such date as the Central Government may, by notification

in the Official Gazette, appoint.

 

  1. Amendment of section 11. - In section 11 of the Trade Marks Act, 1999 (hereinafter)

referred to as the principal Act), in the Explanation, for clause (a), the following clause

shall be substituted, namely:—

 

“(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 36E 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;”.

 

  1. Amendment of section 21. - In section 21 of the principal Act, for sub-section (1), the

following sub-section shall be substituted, namely:—

 

“(1) Any person may, within four months from the date of the advertisement or

re-advertisement of an application for registration, give notice in writing in the

prescribed manner and on payment of such fee as may be prescribed, to the

Registrar, of opposition to the registration.”.

 

  1. Amendment of section 23. - In section 23 of the principal Act, in sub-section (1), after

the words “register the said trade mark”, the words “within eighteen months of the filing

of the application” shall be inserted.

 

  1. Insertion of new Chapter IVA. - After Chapter IV of the principal Act, the following

Chapter shall be inserted, namely:—

 

‘CHAPTER IVA

 

SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADE MARKS THROUGH INTERNATIONAL

REGISTRATION UNDER THE MADRID PROTOCOL

 

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 inter-

governmental 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.

 

(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 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.’.

 

  1. Substitution of new section for section 45. - For section 45 of the principal Act,

the following section shall be substituted, namely:—

 

“45. Registration of assignments and transmissions. - (1) Where a person

becomes entitled by assignment or transmission to a registered trade mark, he shall

apply in the prescribed manner to the Registrar to register his title, and the Registrar

shall, on receipt of the application, register him as the proprietor of the trade mark in

respect of the goods or services in respect of which the assignment or transmission

has effect, and shall cause particulars of such assignment or transmission to be

entered on the register.

 

(2) The Registrar may require the applicant to furnish evidence or further

evidence in proof of title only where there is a reasonable doubt about the veracity

of any statement or any document furnished.

 

(3) Where the validity of an assignment or transmission is in dispute between

the parties, the Registrar may refuse to register the assignment or transmission until

the rights of the parties have been determined by a competent court and in all other

cases the Registrar shall dispose of the application within the prescribed period.

 

(4) Until an application under sub-section (1) has been filed, the assignment or

transmission shall be ineffective against a person acquiring a conflicting interest in

or under the registered trade mark without the knowledge of assignment or

transmission.”.

 

  1. Omission of Chapter X. - Chapter X of the principal Act shall be omitted.

 

  1. Amendment of section 150. - In section 150 of the principal Act, in sub-section (1), for

the word “applications”, the words “applications, international applications” shall be

substituted.

 

  1. Amendment of section 157. - In section 157 of the principal Act, in sub-section (2), —

 

(a) for clause (vii), the following clause shall be substituted, namely:—

 

“(vii) the manner of giving a notice of opposition and the fee payable

for such notice under sub-section (1) and sending counter-statement under sub-

section (2) and submission of evidence and the time therefor under sub-section

(4) of section 21;”;

 

(b) after clause (ix), the following clauses shall be inserted, namely:—

 

“(ixa) the time within which the international application is to be

forwarded to the International Bureau and the manner of certifying the

particulars by the Registrar under sub-section (4) of section 36D;

 

(ixb) the manner of keeping a record of particulars of an international

registration under sub-section (1) of section 36E;

 

(ixc) the manner of informing the International Bureau under sub-section

(2) of section 36E;

 

(ixd) the manner of advertising the international registration and the time

within which the international registration shall be advertised under sub-section

(3) of section 36E;”;

 

(c) after clause (xiii), the following clause shall be inserted, namely:—

 

‘‘(xiiia) the period within which the Registrar shall dispose of an

application under sub-section (3) of section 45;”;

 

(d) clauses (xxvi), (xxvii) and (xxviii) shall be omitted.

 

  1. Power of Central Government to remove difficulties. - (1) Notwithstanding anything

contained in section 156 of the principal Act, if any difficulty arises in giving effect to the

provisions of this Act, the Central Government may, by order published in the Official

Gazette, make such provisions not inconsistent with the provisions of this Act as may

appear to it to be necessary for removing such difficulty:

 

Provided that no order shall be made under this section after the expiry of five years

from the commencement of this Act.

 

(2) Every order made under this section shall, as soon as may be after it is made, be

laid before each House of Parliament.

 V. K. BHASIN,

Secy. to the Govt. of India.