Section 36E of The Trade Marks Act, 1999
1[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.]
Summary
- Section 36E details the procedure and rules for handling an international trademark application that specifically requests protection in India.
- The Registrar keeps a record of the international registration upon receiving advice from the International Bureau.
- The Registrar has eighteen months to refuse protection if the application violates local rules.
- If the Registrar finds no reason to refuse, the international registration is advertised just like a domestic application so the public can oppose it.
- If the Registrar fails to notify the International Bureau about a decision within eighteen months, the trademark is automatically granted protection in India.
- If the original trademark in the applicant's home country is cancelled or refused within five years, the protection in India is also cancelled.
Practical examples
FAQ
1. What is the deadline for the Registrar to refuse an international mark under Section 36E of The Trade Marks Act, 1999?
Under Section 36E of the trade mark law, the Registrar must inform the International Bureau of a refusal within eighteen months from receiving their advice.
2. What happens if nobody opposes the international mark under Section 36E of the trademark rules?
Section 36E of The Trade Marks Act, 1999 states that if there is no opposition and the time limit expires, the Registrar must notify the International Bureau that protection is accepted.
3. Can an international registration replace a local one under Section 36E of The Trade Marks Act, 1999?
Yes, Section 36E of the trade marks law allows an international registration to replace a previously held Indian registration for the same mark upon request, without losing any earlier rights.
4. What happens if the home country cancels the trademark according to Section 36E of The Trade Marks Act, 1999?
If the basic application in the home country is cancelled or refused within five years, Section 36E of The Trade Marks Act, 1999 dictates that the protection in India will also end.
Test yourself
Q1.Under Section 36E of The Trade Marks Act, 1999, what is the maximum time allowed for the Registrar to notify the International Bureau about a refusal?
Q2.Under Section 36E of The Trade Marks Act, 1999, what happens if the Registrar fails to notify the International Bureau about the acceptance within the required time limit?
Q3.Under Section 36E of The Trade Marks Act, 1999, what triggers the loss of Indian protection within the first five years of registration?
Q4.Under Section 36E of The Trade Marks Act, 1999, how does a new international registration interact with an already existing Indian registration for the same mark?