The Lok Sabha has recently passed the Trade Marks Amendment Bill, 2009 that seeks to implement the Madrid Protocol for international registration of marks. Like the Patent Cooperation Treaty, the protocol prescribes a simpler process for filings of trade mark in all member states vide a single application in the originator country. This would enable the filers to register their trademark globally with one fee and one language in the originator country.

The Bill was passed by Lok Sabha without much discussion, which is why; it is expected to undergo discussion when it is tabled in the Rajya Sabha. After it is passed by the Rajya Sabha, and obtains the President’s assent, it shall be notified in the official gazette.

The Bill seeks to introduce a new Chapter IVA for implementation of Madrid protocol. It defines a “basic application” as one filed under Section 18 which is used as the basis for applying for international registration and a “basic registration” as the registration of a trade mark under section 23 which is used as a basis for applying for an international registration. An “international application” would be application for international registration or extension of protection resulting from an international registration made under the protocol. The Trade Marks Registry shall act as the office of origin, for applications originating from India and shall certify the applications received by it regarding corresponding particulars and transmit them immediately to WIPO for registration. Thereafter, they shall be forwarded to the designated countries where protection is sought. The entire time period for the registration is prescribed as 18 months under Section 23 of the Trade Marks Act, 1999. Moreover, the date of international registration shall be deemed to replace the registration held in India, without prejudice to any right acquired under such previously held registration.

Other highlights of the Bill include – reduction in the time-period of filing a notice of opposition from four months to three months, simplification of law relating to transfer of ownership of trade marks by assignment or transmission and omission of Chapter X, dealing with special provisions for textile goods. These changes are expected to speed up the proceedings at the Registry and bring the legislation in line with international practice and modern business needs.