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TRADE MARKS (AMENDMENT) ACT 2010

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.
2. 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;".
3. 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.".
4. 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.
5. 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.'.
6. 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.".
7.
Omission of Chapter X. - Chapter X of the principal Act shall be omitted.
8. 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.
9. 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.
10. 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.