Why Government Wants to Bring the Trademark Amendment Bill, 2022?
In its winter session (December 7, 2022 – December 29, 2022), Parliament listed 7 bills for consideration and passing, and 16 Bills were listed for introduction, consideration and passing. In these 16 bills, one of the important bills that was to be introduced was the “Trade Marks (Amendment) Bill, 2022” (hereinafter ‘The Bill’), the key objectives of which was to incorporate the aspects of Madrid Registration System, amend the procedure regarding show cause hearing, opposition hearing, and incorporation of electronic communication by Trade Mark Office.
In this article we will limit our discussions to give you a brief about the Bill, the need for bringing this amendment bill by the central government, followed with our upcoming articles about,
- Madrid Registration Systems in light of the Bill;
- The existing procedure of show cause hearing and the issues involved;
- The need of electronic communication in the Trademark Office and how will this improvise the procedure, better.
Expectations From the Trademarks Amendment Bill, 2022
The Trade Marks (Amendment) Bill, 2022 seeks to adapt the recommendation made in the 161st report on “Review of the Intellectual Property Rights Regime in India”[1] presented in Rajya Sabha on 23rd July, 2021 which suggested that in order to ensure speedy grants of trademark registration, period for which an application remains published and open for a third party to file an opposition should be reduced from 4 to 2 months at par with other nations such as U.K., Spain, South Korea, Japan, Denmark, Singapore, etc. The bill further intends to change the current show cause and opposition hearing procedure as well as include several essential components of the Madrid Protocol into the Indian Trademark structure. Adapting the concepts of the Madrid Protocol to purportedly make it easier to transform and replace WIPO’s international registrations designating India, are said to be the main focus of the bill. The bill
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks or the Madrid Protocol provides a cost-effective and efficient way for trademark holders, individuals and businesses to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.[2] Furthermore, Article 9 of the Madrid Protocol [3] states that in the event that international registration is cancelled at the request of the office of origin, application for registration of the same mark filled by the holder of the mark in the territory of any of the contracting parties shall be treated as if it had been filed on the date of the international registration and, shall enjoy the same priority provided that it is filed within three months of cancellation of registration of mark and such application complies with all the requirements of the applicable law, including the requirements concerning fees. For the same mark and identical products and services registered in the name of the same person in a specified Contracting Party, a national or regional registration is presumed to be superseded by an international registration. The result of replacement is that the possessor of the international registration may remain entitled to the earlier rights obtained as a result of that national or local registration even if it is not renewed on that level. The international registration holder may ask the office of the Contracting Party to indicate the international registration in its register, even though replacement happens automatically.
As a result, the prevailing trademark structure in India, which has ratified the Madrid Protocol since 2013, recognizes and allows for the registration of International trademarks by way of designation upon submission of an application to the International Bureau of the WIPO. But surprisingly there exists no rules for the transformation and replacement of such international trademarks. Therefore, if the application is not transformed as per Article 9 of the Protocol to a national application, the cancellation of the International Registration on the foundation of which the Indian designation is submitted would represent a deep trouble for the Indian designation.
Though the bill was not introduced in the last winter session of the Parliament (Winter Session: December 7, 2022 – December 29, 2022), but it is expected to be introduced in the budget session which is necessary to speed up the trade mark application process in India, thereby safeguarding the rights of the proprietor.
Trademark Registration Process in India
Trademark Hearing: Key Steps to Strengthen Your Case
Civil and Criminal Remedies – Trademark Infringement & Passing Off
Procedure to Register a Trademark in India
Why Government Wants to Bring the Trademark Amendment Bill, 2022?
In its winter session (December 7, 2022 – December 29, 2022), Parliament listed 7 bills for consideration and passing, and 16 Bills were listed for introduction, consideration and passing. In these 16 bills, one of the important bills that was to be introduced was the “Trade Marks (Amendment) Bill, 2022” (hereinafter ‘The Bill’), the key objectives of which was to incorporate the aspects of Madrid Registration System, amend the procedure regarding show cause hearing, opposition hearing, and incorporation of electronic communication by Trade Mark Office.
In this article we will limit our discussions to give you a brief about the Bill, the need for bringing this amendment bill by the central government, followed with our upcoming articles about,
- Madrid Registration Systems in light of the Bill;
- The existing procedure of show cause hearing and the issues involved;
- The need of electronic communication in the Trademark Office and how will this improvise the procedure, better.
Expectations From the Trademarks Amendment Bill, 2022
The Trade Marks (Amendment) Bill, 2022 seeks to adapt the recommendation made in the 161st report on “Review of the Intellectual Property Rights Regime in India”[1] presented in Rajya Sabha on 23rd July, 2021 which suggested that in order to ensure speedy grants of trademark registration, period for which an application remains published and open for a third party to file an opposition should be reduced from 4 to 2 months at par with other nations such as U.K., Spain, South Korea, Japan, Denmark, Singapore, etc. The bill further intends to change the current show cause and opposition hearing procedure as well as include several essential components of the Madrid Protocol into the Indian Trademark structure. Adapting the concepts of the Madrid Protocol to purportedly make it easier to transform and replace WIPO’s international registrations designating India, are said to be the main focus of the bill. The bill
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks or the Madrid Protocol provides a cost-effective and efficient way for trademark holders, individuals and businesses to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.[2] Furthermore, Article 9 of the Madrid Protocol [3] states that in the event that international registration is cancelled at the request of the office of origin, application for registration of the same mark filled by the holder of the mark in the territory of any of the contracting parties shall be treated as if it had been filed on the date of the international registration and, shall enjoy the same priority provided that it is filed within three months of cancellation of registration of mark and such application complies with all the requirements of the applicable law, including the requirements concerning fees. For the same mark and identical products and services registered in the name of the same person in a specified Contracting Party, a national or regional registration is presumed to be superseded by an international registration. The result of replacement is that the possessor of the international registration may remain entitled to the earlier rights obtained as a result of that national or local registration even if it is not renewed on that level. The international registration holder may ask the office of the Contracting Party to indicate the international registration in its register, even though replacement happens automatically.
As a result, the prevailing trademark structure in India, which has ratified the Madrid Protocol since 2013, recognizes and allows for the registration of International trademarks by way of designation upon submission of an application to the International Bureau of the WIPO. But surprisingly there exists no rules for the transformation and replacement of such international trademarks. Therefore, if the application is not transformed as per Article 9 of the Protocol to a national application, the cancellation of the International Registration on the foundation of which the Indian designation is submitted would represent a deep trouble for the Indian designation.
Though the bill was not introduced in the last winter session of the Parliament (Winter Session: December 7, 2022 – December 29, 2022), but it is expected to be introduced in the budget session which is necessary to speed up the trade mark application process in India, thereby safeguarding the rights of the proprietor.
Trademark Registration Process in India
Trademark Hearing: Key Steps to Strengthen Your Case
Civil and Criminal Remedies – Trademark Infringement & Passing Off
Procedure to Register a Trademark in India
Why Government Wants to Bring the Trademark Amendment Bill, 2022?
In its winter session (December 7, 2022 – December 29, 2022), Parliament listed 7 bills for consideration and passing, and 16 Bills were listed for introduction, consideration and passing. In these 16 bills, one of the important bills that was to be introduced was the “Trade Marks (Amendment) Bill, 2022” (hereinafter ‘The Bill’), the key objectives of which was to incorporate the aspects of Madrid Registration System, amend the procedure regarding show cause hearing, opposition hearing, and incorporation of electronic communication by Trade Mark Office.
In this article we will limit our discussions to give you a brief about the Bill, the need for bringing this amendment bill by the central government, followed with our upcoming articles about,
- Madrid Registration Systems in light of the Bill;
- The existing procedure of show cause hearing and the issues involved;
- The need of electronic communication in the Trademark Office and how will this improvise the procedure, better.
Expectations From the Trademarks Amendment Bill, 2022
The Trade Marks (Amendment) Bill, 2022 seeks to adapt the recommendation made in the 161st report on “Review of the Intellectual Property Rights Regime in India”[1] presented in Rajya Sabha on 23rd July, 2021 which suggested that in order to ensure speedy grants of trademark registration, period for which an application remains published and open for a third party to file an opposition should be reduced from 4 to 2 months at par with other nations such as U.K., Spain, South Korea, Japan, Denmark, Singapore, etc. The bill further intends to change the current show cause and opposition hearing procedure as well as include several essential components of the Madrid Protocol into the Indian Trademark structure. Adapting the concepts of the Madrid Protocol to purportedly make it easier to transform and replace WIPO’s international registrations designating India, are said to be the main focus of the bill. The bill
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks or the Madrid Protocol provides a cost-effective and efficient way for trademark holders, individuals and businesses to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.[2] Furthermore, Article 9 of the Madrid Protocol [3] states that in the event that international registration is cancelled at the request of the office of origin, application for registration of the same mark filled by the holder of the mark in the territory of any of the contracting parties shall be treated as if it had been filed on the date of the international registration and, shall enjoy the same priority provided that it is filed within three months of cancellation of registration of mark and such application complies with all the requirements of the applicable law, including the requirements concerning fees. For the same mark and identical products and services registered in the name of the same person in a specified Contracting Party, a national or regional registration is presumed to be superseded by an international registration. The result of replacement is that the possessor of the international registration may remain entitled to the earlier rights obtained as a result of that national or local registration even if it is not renewed on that level. The international registration holder may ask the office of the Contracting Party to indicate the international registration in its register, even though replacement happens automatically.
As a result, the prevailing trademark structure in India, which has ratified the Madrid Protocol since 2013, recognizes and allows for the registration of International trademarks by way of designation upon submission of an application to the International Bureau of the WIPO. But surprisingly there exists no rules for the transformation and replacement of such international trademarks. Therefore, if the application is not transformed as per Article 9 of the Protocol to a national application, the cancellation of the International Registration on the foundation of which the Indian designation is submitted would represent a deep trouble for the Indian designation.
Though the bill was not introduced in the last winter session of the Parliament (Winter Session: December 7, 2022 – December 29, 2022), but it is expected to be introduced in the budget session which is necessary to speed up the trade mark application process in India, thereby safeguarding the rights of the proprietor.
Trademark Registration Process in India
Trademark Hearing: Key Steps to Strengthen Your Case
Civil and Criminal Remedies – Trademark Infringement & Passing Off
Procedure to Register a Trademark in India
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