Trademark law of
India is passing through an interesting and developmental phase.
Recently Samsung has raised the issue of international
exhaustion of a trademark under Indian trademark law. Similarly,
trademarks registrations in India have also increased as India is
becoming a favourite destination for commercial activities world
over.
Trademark
registration in India is regulated by the Trademarks Act 1999 of
India. A registered trademark is valid for a period of 10 years that
can be renewed for another 10 years at a time. Further, international
registration of trademarks under Madrid Agreement and Madrid Protocol
can also be explored by applicants. However, the Madrid
Agreement and Madrid Protocol and its applicability and
implementation in India are still in a flux.
There may be cases where a trademark holder fails to
renew his/her/its trademark in time. Renewal
of an expired trademark is the only option left in such cases. In
India even if the mark has been expired, one can apply for its
re-registration. If someone else applies for registration of expired
trademark as per the prescribed procedure, owner of expired trademark
can file objections at the registry, tribunal or appropriate forum.
In United States (US), to keep the registration
alive or valid for all trademarks registrations, except for non
Madrid Protocol based registrations, the registration owner must file
specific documents and pay fees at regular intervals. Failure
to file these documents will result in the cancellation of
his/her/its registration.
For Madrid Protocol Based Registration, after the
protection is granted to the international registration and a U.S.
registration issues, to keep protection in the U.S., the U.S.
registration owner must file specific documents and pay fees at
regular intervals. Failure to file these documents will result in the
cancellation of his/her/its U.S. registration and the invalidation of
protection of the international registration by the United States
Patent and Trademark Office (USPTO).
Under Section 8 of the Trademark Act, 15 U.S.C.
§1058, a §8 Declaration of Continued Use is required to be given by
the trademark owner. The Declaration is a sworn statement, filed by
the owner of a registration that the mark is in use in commerce. If
the owner is claiming excusable nonuse of the mark, a §8 Declaration
of Excusable Nonuse may be filed. The purpose of the §8 Declaration
is to remove marks no longer in use from the register.
The USPTO will cancel any registration on either the
Principal Register or the Supplemental Register if a timely §8
Declaration is not filed by the current owner of the registration
during the prescribed time periods. The USPTO has no authority
to waive or extend the deadline for filing a proper §8
Declaration. Registrations finally cancelled after the expiry of
permissible period due to the failure to file a §8 Declaration
cannot be reinstated or revived. A new application to pursue
registration of the mark again must be filed.
Holders (owners) of registered extensions of
protection to the U.S. (also called §66(a) registrations,
registrations resulting from 79’ series applications, international
registrations extended to the U.S.) who wish to maintain the
protection granted their mark in the U.S. pursuant to the Madrid
Protocol must file an affidavit or declaration of use in commerce or
excusable nonuse to avoid cancellation of protection in U.S. Such
affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of
the Trademark Act. The USPTO has no authority to waive or
extend the deadline for filing a proper §71 Declaration.
Registrations finally cancelled after the expiry of permissible
period due to the failure to file a §71 Declaration cannot be
reinstated or revived. A new application to pursue registration
of the mark again must be filed.
The holder of a registered extension of protection
of an international registration to the U.S. must file an application
for renewal of the international registration with the International
Bureau (IB). Renewal of international registrations is governed
by Article 7 of the Madrid Protocol and Rules 29 - 31 of the Common
Regulations under the Madrid Agreement and Protocol.
A renewal can be filed during the six months before
expiry of the period of protection or in the six months following the
expiry of the current period of protection with the payment of a
surcharge.
The term of an international registration is ten
years, and it may be renewed for ten years upon payment of the
renewal fee.
Perry4Law
hope this information would be useful to all concerned stakeholders.
