4 things you need to know while responding to provisional refusal from the Indian Trademark Office under the Madrid Protocol.
Madrid protocol – India
Deadline to respond to objections:
The deadline to respond to objections raised by the Indian Trademark Office is 30 days from the date of receipt of the provisional refusal notification by the applicant. Accordingly the date to calculate the deadline will be from the date when you actually receive the provisional refusal notification from the International Bureau of WIPO. However if there is a delay by the post the date of receipt of the provisional refusal from WIPO needs to be evidenced by documentary proof such as the postal receipt. Hence in matters where you receive the notifications from the International Bureau of WIPO by paper it is advisable to retain the postal receipt.
Extension of time:
While the deadline to file a reply to a provisional refusal is 30 days from the date of receipt, it is possible to extend this deadline by filing an appropriate application prior to the expiry of the 30 day deadline. While there is no specific provision in the statue in India, the guidelines issued by the Trademark Office state that if no response is received within two months of the date of notification of the refusal or if no request for extension has been filed, the application refusal gets confirmed. Accordingly not more than 1 extension is recommended as granting of extension is at the discretion of the trademark office.
Importance of claiming use of the mark in India:
Unfortunately there is no provision for applicants to either state when the mark was used in India or if they want to file on a “proposed to be used” basis at the time of filing the international application designating India. This despite the fact that India has reserved the right to require a specific declaration of intention to use as per Rule 7 (2) of the Common Regulations.
Being a common law country, protection of trademark rights in India is based on prior use as opposed to protecting rights of the person first to file. Claiming usage for your trademark applications plays an important role in terms of arguing acquired distinctiveness and, proving prior adoption or use in oppositions or any action against third party infringers. The Indian Courts hold a very broad view of the term ‘usage of a mark in India;’ and have gone to great lengths to broaden its scope in order to protect the legitimate interests of the genuine trademark owners. Users from India accessing the website where the trademark is available, trans-border reputation and even mere presence of advertisements containing the trademarks in International publications circulated in India amounts to usage of the trademark in India.
Amending specification of goods/services:
Amendments to goods/services in respect of the Indian application needs to be made only at the International Bureau of WIPO and the same needs to be notified to the Indian Trademark Office by the International Bureau of WIPO.
Though two years have passed since the Madrid Protocol coming to force in India, the trademark office is yet to standardize the process post issuance of the provisional refusal. Though it is not surprising we only hope that the recent hiring of new examiners by the trademark office will fasten the prosecution process giving some relief to the applicants who have been waiting for years for registration of their trademarks.