The Madrid Convention is an international treaty managing the registration of trademarks across multiple countries using a single application. In India, the trademark office looks at applications in the time period of year and a half of recording and can give a provisional refusal in the occasion that it tracks down justification for refusal. Shared beliefs for provisional refusal include challenges with existing trademark registration, enlightening or non-particular trademarks, and denotes that are against public approach or deep attribute. The Indian trademark office gives a detailed explanation of the reasons for refusal and a deadline for the candidate to answer.

Responses to an international application under the Madrid Protocol must be filed under three circumstances:

• Response to any anomaly raised by the International Bureau of WIPO.
• Response to provisional refusal raised by the designated contracting party; and
• Response to third-party opposition.

How to Respond to a Provisional Refusal in India?

If you receive a provisional refusal for your trademark application in India, you have the right to respond to the refusal. Here are the steps you should follow to respond to a provisional refusal in India:

Review the Grounds for Refusal:

• Examine the provisional refusal notice to understand reasons for refusal.
• Helps in preparing a well-crafted response.

Analyse the Refusal:

• Assess trademark application based on refusal grounds.
• Identify issues requiring additional evidence, arguments, or amendments.

Prepare a Response:

• Address specific issues raised in the provisional refusal.
• Provide detailed written response with necessary evidence and arguments.

Submit Your Response:

• Ensure response is submitted to Indian Trademark Office before the designated deadline.
• Failure to respond by the deadline leads to application abandonment.

Attend a Hearing, if Required:

• Indian Trademark Office may require a hearing to discuss issues.
• Attend hearing and present case if necessary.

Seek Assistance of a Local Trademark Attorney:

• Consider seeking help from a local trademark attorney.
• Attorney can guide through response process and represent in dealings with Indian Trademark Office.

Complexity of Response Process:

• Responding to provisional refusal in India can be complex.
• Detailed understanding of Indian trademark law and procedures is crucial.

Purpose of a Provisional Refusal in India:

• Allows Indian Trademark Office to examine international trademark applications filed through the Madrid Protocol.
• Determines if applications meet legal requirements for registration in India.

Examination Process:

• Indian Trademark Office examines designated India applications to ensure compliance with Indian Trademarks Act, 1999.

Reasons for Provisional Refusal:

• Issues may include conflicts with existing trademarks, descriptive/non-distinctive marks, or marks against public policy/morality.

Preliminary Decision:

• Provisional refusal indicates that trademark application doesn’t meet legal requirements for registration in India.

Components of a Provisional Refusal:

• Grounds for Refusal:

• Specify legal basis for refusal, such as conflict with existing trademark, descriptive mark, or mark against public policy.

• Specific Objections:

• State precise objections to international trademark application, like lack of distinctiveness or problems with classification.

• Deadline to Respond:

• Provisional refusal sets deadline for response, typically six months from issuance date.
• Deadline may vary based on circumstances.

• Consequences of Failure to Respond:

• Failure to reply by the deadline leads to abandonment of international trademark application in India.

• Relevant Legal Provisions:

• May cite relevant sections of Indian Trademarks Act, 1999 or other applicable laws, regulations, or policies pertinent to refusal grounds and objections.

Response to third-party opposition:

• Opposition Period:

• Any third-party can file opposition within 4 months of trademark publication in the Trademarks Journal.
• similar process as that of national trademarks.

• Response Filing Process:

• Applicant must engage a trademark agent/attorney to respond to opposition.

• Communication to International Bureau:

• Any objection or opposition must be communicated to International Bureau within 18 months.

• If 18 months are expiring and opposition period is ongoing, designated country can inform International Bureau of examination completion.
• Mark remains open to opposition.

• Similarity with National Registration:

• Filing a response under Madrid Protocol akin to national registration response.

• Importance of Local Representation:

• When filing international trademark, engage trademark agent/attorney with address in designated country.
• Necessary for communication exchange with trademark office of designated country and International Bureau.

Response to irregularities:

• Scrutiny Process by WIPO:

• WIPO scrutinizes international applications from offices of origin for formalities.
• Irregularities communicated to applicant and office of origin.

• Response Deadline:

• Rule 11(2) (1) under Madrid requires response to irregularities within 3 months from notification via office of origin.

• Office of Origin for India:

• Trademarks Registry [Trademark Office], India serves as office of origin for international applications originating in India.

• Classification of Irregularities:

• Trademark office classifies irregularities to determine actions needed from office and applicant.

• Communication of Rectifications:

• Trademark office generates letter detailing rectifications for applicant.
• Applicant given 1 month from communication date to respond.

• Transmission of Response:

• After applicant responds, trademark office forwards response to International Bureau.

• Electronic Communication:

• All communications conducted electronically.

Conclusion:

A provisional refusal from the Indian trademark office addresses issues in international trademark applications via the Madrid Protocol. Its aim is to assess if the application complies with India’s registration standards. Typically, it outlines grounds for refusal, specific objections, response deadlines, consequences of non-response, and relevant legal provisions. For clarifications or drafting responses, contact legal experts at Kanakkupillai.

FAQs:

1. How do I reply to a provisional refusal?

The Madrid System procedure varies depending on the IP Office of the designated member country. Exchanges occur directly between the applicant (or their representative) and the IP Office; WIPO does not intervene. A provisional refusal outlines grounds for refusal, review or appeal time limits, designated authority for such requests, and the necessity of a local representative.

2. Why is WIPO now requiring that applicants, new holders and representatives indicate their email address?

The Assembly of the Madrid Union has made email a required indication and privilege electronic communication to prevent applicants and holders from missing time-sensitive communications, such as notifications of provisional refusal, which could result in loss of rights. WIPO continues to send electronic communications to its users worldwide, despite the ongoing disruptions caused by the COVID-19 pandemic and local health authorities’ guidance.

3. What is the Madrid System?

The Madrid System offers a convenient and cost-effective solution for registering and managing trademarks worldwide. You file a single international trademark application and pay one set of fees, in one currency, to apply for protection in multiple countries or regions simultaneously. You can then modify, renew or expand your global trademark portfolio using one centralized system

4. If I provide my email address, would WIPO make it available to the public?

No, WIPO will not make your email address available to the public. WIPO will not display your email address on the Madrid System online information services (e.g., Madrid Monitor, Madrid Real-time Status) nor publish it in the WIPO Gazette of International Marks.

5. Can I transfer my international trademark registration to someone else?

Yes! You can use “Change Ownership” under eMadrid to request a total (all goods and services in all designated Madrid System Members) or partial (some goods and services, in some designated Members) change in ownership.