Indian Parliamentary Research Service Legislative Summaries

The Trade Marks (Amendment) Bill, 2007 was introduced in the Lok Sabha on August 23, 2007. The Bill was referred to the Standing Committee on Commerce (Chairperson: Dr. Murli Manohar Joshi) on October 1, 2007. It is scheduled to submit its report within three months. The Bill was introduced by the Ministry of Commerce and Industry.

The Bill amends the Trade Marks Act, 1999 (Principal Act) to provide for protection of Indian trade marks in other countries, in line with the Madrid Protocol. The Principal Act does not allow Indian and foreign nationals to register trade marks simultaneously in other countries. Thus, if a person wants to register his trade mark in other countries he has to make a separate application and pay fees in the respective country.

The Madrid Protocol, adopted in 1989 and administered by the International Bureau of the World Intellectual Property Organisation, provides for a system for international registration of trade marks. In order to accede to the Protocol, India needs to amend the Principal Act.

The Bill prescribes a period of 18 months within which a trade mark has to be registered.

The Controller-General of Patents, Designs and Trade Marks is the Registrar of Trade Marks, appointed with any other officers deemed fit, by the central government. The Bill empowers the Registrar of Trade Marks to deal with international applications originating from India as well as those received from the International Bureau and maintain record of international registrations.

In case of international registrations originating from India, the applicant or registered proprietor may make an international application on a prescribed form. If a person holds an international registration, he may make an international application on the prescribed form for such registration to any other Contracting Party (any country or inter-governmental organisation which is part of the Madrid Protocol).

The Bill reduces the time period of filing a notice of opposition of published applications, from four months to three months.

The Bill simplifies the provisions related to transfer of ownership of trade marks by assignment or transmission. If a person becomes entitled to a registered trade mark by assignment or transmission, he shall apply in the prescribed manner to the Registrar to register his title. The Registrar may ask the applicant to furnish further evidence only where there is a reasonable doubt about the veracity of any statement or document.