RECTIFICATION OF INTERNATIONAL TRADEMARK REGISTRATIONS: THE MADRID PROTOCOL AND THE INDIAN PROBLEM

-       Shivam Jaiswal[1]

I.       ABSTRACT

This article examines the critical issue of rectifying international trademark registrations under Indian law, with particular focus on Sections 47 and 57 of the Trade Marks Act, 1999. While these provisions provide robust mechanisms for removal and rectification of national registrations, they are notably excluded from application to international registrations under the Madrid Protocol. This legislative omission leaves rights holders without an effective domestic remedy, risking cluttered registers and undermining legal certainty. The paper first outlines the scope of Sections 47 and 57, and other relevant legislative provisions. It then contrasts India’s framework with the European Union and the United Kingdom, where equivalent provisions are expressly extended to international registrations under the EUTMR and the UK Trade Marks Act 1994, reinforced by case law. The article concludes by identifying reform pathways for India, emphasizing the urgent need to extend Sections 47 and 57 to international registrations.

Key Words: Trademarks; International Registrations; Rectification

II.     INTRODUCTION

Trademarks are more than just brand names or logos. They are legal safeguards that protect a business’s identity, preserve consumer trust, and often carry immense commercial goodwill. For this protection to be meaningful, the trademark register must be accurate and reliable. Any errors or conflicting entries can infringe legitimate rights, mislead consumers, and distort fair competition. Most trademark systems, including India’s, address this through remedies that allow the removal or correction of entries. In India, these are primarily provided for under Section 47[2] as well as Section 57[3] of the Trade Marks Act, 1999[4] (the Act).

With global trade on the rise, many businesses now seek protection through the Madrid System for the International Registration of Marks[5] (Madrid Protocol), an international treaty managed by the World Intellectual Property Office (WIPO), which allows them to secure trademark rights in multiple countries with a single application. India became a member of this treaty in 2013[6] and incorporated the related provisions into domestic law.

However, when it comes to rectifying international registrations, the Indian legal framework shows a serious shortcoming. Although India has adopted the Madrid Protocol, it has failed to clearly provide for a procedure for the rectification of international Registrations under either Section 47 or Section 57. This omission has created a significant legislative gap, leaving rights holders without a clear legal remedy in such circumstances. It also creates uncertainty, especially for small and medium enterprises (SMEs) that may not have the resources to navigate complex cross-border legal remedies.

This article delves into this legislative gap in detail. It also examines the policies of other jurisdictions, such as the European Union (EU) and the United Kingdom (UK), to see how they address this issue, with the goal of suggesting potential reforms for the Indian legal system.

III.   RECTIFICATION UNDER THE ACT

Under the Act, there are two central provisions governing the removal or correction of trademarks:

·       Section 47 – According to this provision, a registered trademark may be taken off the Register on the grounds of non-use. Under this provision, an aggrieved person may make an application for the removal of a trademark, if the mark has not been used for five years or was registered with no legitimate intent to use. The provision also allows for limitations on the rights available to a trademark owner by virtue of the registration.

·       Section 57 – This section provides for a broader rectification power. Any aggrieved party may apply to the High Court (HC) or to the Registrar of the Trade Mark Registry (the Registrar) under this provision for a remedy. If the authority deems fit, it may pass an appropriate order under this provision.

This may include cancelling or varying the registration of a trademark under Section 57(1)[7], or making, removing, or altering an entry in the Register under Section 57(2)[8].

Together, these two provisions provide a comprehensive mechanism for ensuring that the Register reflects only valid, bona fide trademarks. While the former focuses on non-use, the latter allows for correction of erroneous or conflicting entries. These provisions form the twin pillars of rectification under the Indian trademark jurisprudence.

A registered proprietor who believes that another trademark in the Register infringes their own registered mark, or that the other registration has not been put to any bona fide use, may approach the appropriate authority for a remedy. They can apply for an order to cancel or modify such other registration. This, in effect, seeks to rectify the Register.

The legislation clearly specifies the authorities and procedures for rectifying national registrations.  A striking gap arises when considering their application to international registrations under the Madrid Protocol, whether they originate from India or designate India. In such cases, there are no provisions that set out the responsible authorities or the procedure to be followed, potentially allowing conflicting or erroneous entries to remain unaddressed.

IV.   THE MADRID PROTOCOL AND THE ACT

India joined the Madrid Protocol in April 2013 and, to implement its provisions, amended the Act by introducing Chapter IVA. This chapter contains provisions related to international registrations under the Madrid Protocol, either originating from India or designating India, effects, and duration of such international registrations, et al. This chapter, however, fails to lay down any proper rectification procedure for international registrations, as it does not extend the remedies under Section 47 and Section 57 to such international registrations.

According to Section 36B(i)[9], International Bureau (IB) refers to the WIPO’s IB. Section 36B(j)[10] of the Act defines the registrations recorded in the IB’s register as international registrations. This raises a key concern: in the absence of explicit provisions, can any Indian authority hear and decide rectification matters for an international registration, given that the register is maintained by the WIPO, and not the Indian Registry?

Section 36E(1)[11] of the Act requires the Indian Trade Marks Registry to maintain records of international registrations, but this function is limited to administrative record-keeping and carries no real authority. Under Rule 68(1)[12] of the Trade Marks Rules, 2017[13], any changes to this register can only be made based on the advice of the IB, leaving the Registry with no independent power to correct or rectify entries. While Rule 68(2)[14] states that entries in this register have the same effect as those in the national register, it provides no procedure or designated authority for rectification, rendering it largely symbolic.

Rule 70[15] adds to this limitation by requiring the Registrar to notify the IB if an international registration ceases to have effect in India due to legal proceedings. However, the only proceedings recognized under the Act for international registrations are opposition proceedings, meaning rectification falls outside the rule’s scope.

Moreover, Section 36E[16] applies certain provisions of the Act to international registrations mutatis mutandis, i.e., having made the necessary changes, but explicitly omits Sections 47 & 57. This effectively means that the rectification procedures under this section shall not apply mutatis mutandis to international registrations under the Madrid Protocol. Section 36F[17] does grant international registrations in India the same protection as domestic marks, but provides no clarity on the procedure or authority for rectification.

Together, these gaps create a significant legislative void, leaving no effective domestic forum or process to correct international registrations and undermining the enforcement of trade mark rights in India. As a result, conflicting or unused international marks may remain on record in India with no clear avenue for challenge.

V.     THE UK AND EU SCENARIO

International jurisdictions like the UK and the EU have their own set of regulations and legislations to implement the Madrid Protocol’s obligations for international trademark registration.

1.    EU – The European Union (EU) has the Regulation of the European Parliament and of the Council on the European Union trade mark[18] (EUTMR) to govern the trademark registration and related functioning throughout the EU.

According to Article 198(2)[19] of the EUTMR, an application to invalidate the effects of an international registration (which essentially means the revocation of its protection) that designates the EU, is treated in the same way as an application for revocation under Article 58[20] for non-use, or for invalidity under Articles 59[21] or 60[22]. A reading of the relevant sections shows that such an application, similar to rectification of the Register under the Act, must be filed with the EUIPO under Article 60 of the EUTMR. Article 198(2) further provides that this same procedure also applies to international registrations. In the case of C=Holdings BV v. EUIPO[23], wherein the final judgment was rendered by the General Court (Seventh Chamber), the aggrieved party had initially filed an application with the EUIPO under Article 198(2). The initial decision was given by the Cancellation Division of the EUIPO, the appeal to which lay with the Board of Appeal.  Thus, under the EUTMR, the EUIPO has the jurisdiction to entertain an application related to the revocation of protection of an international registration, for invalidity or non-use, designating the EU.

2.     UK – The UK had passed the Trade Marks (International registration) Order 1996[24] (Order) to give effect to the provisions of the Madrid Protocol. Section 13(1)[25] of this Order, extends the application of Sections 46[26](revocation for non-use) and 47[27] (invalidity/rectification) of the Trade Marks Act 1994[28] to international applications for registration of trade marks under the Madrid Protocol as well, for their revocation or invalidation. Furthermore, Section 13(4)[29] of the Order applies Rule 38[30] of the amended Trade Mark Rules, 2008[31] to cases involving the revocation or invalidation of protection for a protected international trademark. Under the amended Rule 38, the Registrar is empowered to order the revocation of the mark’s registration.

Thus, under the UK Trade Marks Act 1994, and the accompanying 1996 Order as well as the amended 2008 Trade Mark Rules, it is the Registrar who has the jurisdiction to entertain and decide upon the application for revocation of an international registration.  A key similarity between the trademark laws of these international jurisdictions and the Indian law is that all of them recognize the international register as the one maintained by the IB under the Madrid Protocol. Further, all three jurisdictions provide for the removal of a trademark on the grounds of non-use or invalidity.

The difference, however, lies in the approach to revoking protection for an international registration. The EU and the UK clearly set out both the procedures and the authorities responsible for such actions. In contrast, Indian law provides no clear procedure for cancelling or revoking an international registration, and therefore offers no defined mechanism for rectifying the Register in such cases.

VI.   LEGISLATIVE GAPS, LEGAL FALLOUT, AND THE ROAD TO REFORM

The current Indian legal system lacks a clear and effective process for correcting the Register in relation to international trademark registrations. The contrast between India and its counterparts is stark. India’s failure to extend Sections 47 and 57 to international registrations has left a double gap:

• No remedy to remove international registrations for non-use.

• No remedy to correct or rectify erroneous entries of international registrations.

The Registrar’s role is uncertain, since the international register is maintained by the WIPO IB, not by any Indian authority. While approaching the HC might seem like an option, there is no specific provision granting it the power to hear and decide such matters.

Even directly contacting the IB, though possible in theory, is often unrealistic, especially for SMEs. They simply may not have the resources, expertise, or international legal support to pursue action abroad.

While this lack of clear procedures and jurisdiction leaves a major gap in the law, there are certain measures that can be taken to fill this legislative void –

i.               Amend Section 36E of the Act to clearly extend Sections 47 and 57 and other relevant provisions mutatis mutandis to international trademark registrations. This would ensure that domestic and international marks are treated alike in rectification matters.

ii.              Update the Trade Marks Rules to provide a clear, step-by-step process for rectifying international registrations, specifying the competent authority, filing timelines, evidence requirements, and hearing procedures to bring certainty and uniformity.

iii.            Judicial guidelines in the interim – Until the law is amended, the higher judiciary could lay down guidelines on the process, forum, and standards for such cases, preventing delays and confusion.

iv.            Issue interim circulars or practice directions from the Ministry of Commerce to guide stakeholders until permanent legal changes are made.

VII. CONCLUSION

Sections 47 and 57 of the Act are intended to work together to keep the Register accurate and fair. Yet, their exclusion from the international registration framework has created a serious legal vacuum. In contrast, the EU and UK explicitly extend their equivalents of these provisions to international registrations, ensuring robust remedies for rights holders.

Without clear laws, rectification of international trade mark registrations in India remains a legal grey area, forcing affected parties to face uncertainty, procedural roadblocks, and jurisdictional disputes. The lack of a specific authority and defined process denies effective remedies to rights holders. For India to fulfill the promise of the Madrid Protocol and provide effective trademark protection, it must bridge this gap. This is now a matter of legal necessity, not policy choice. The legislature must amend the law, or the judiciary must interpret it clearly. Until then, the gap will remain, and the promised protection for trademark owners will go unfulfilled.

[1] Shivam Jaiswal is a student at Hidayatullah National Law University.

[2] The Trade Marks Act, §47, No. 47, Acts of Parliament, 1999 (India).

[3] The Trade Marks Act, §57, No. 47, Acts of Parliament, 1999 (India).

[4] The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).

[5] Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted June 27, 1989, as amended October 3, 2006 and November 12, 2007, in WIPO, Madrid Protocol (as amended Nov. 12, 2007).

[6] World Intellectual Property Organization, WIPO/TM/TYO/2/16/2.6 (2016), https://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_2_6.pdf.

[7] The Trade Marks Act, §57(1), No. 47, Acts of Parliament, 1999 (India).

[8] The Trade Marks Act, §57(2), No. 47, Acts of Parliament, 1999 (India).

[9] The Trade Marks Act, §36B(i), No. 47, Acts of Parliament, 1999 (India).

[10] The Trade Marks Act, §36B(j), No. 47, Acts of Parliament, 1999 (India).

[11] The Trade Marks Act, §36E(1), No. 47, Acts of Parliament, 1999 (India).

[12] The Trade Marks Rules, Rule 68(1), 2017.

[13] The Trade Marks Rules, 2017.

[14] The Trade Marks Rules, Rule 68(2), 2017.

[15] The Trade Marks Rules, Rule 70, 2017.

[16] The Trade Marks Act, §36E, No. 47, Acts of Parliament, 1999 (India).

[17] The Trade Marks Act, §36F, No. 47, Acts of Parliament, 1999 (India).

[18] Council Regulation 2017/1001, of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark, 2017 O.J. (L 154) 1.

[19] Council Regulation 2017/1001, art. 198(2), of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark, 2017 O.J. (L 154) 1.

[20] Council Regulation 2017/1001, art. 58, of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark, 2017 O.J. (L 154) 1.

[21] Council Regulation 2017/1001, art. 59, of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark, 2017 O.J. (L 154) 1.

[22] Council Regulation 2017/1001, art. 60, of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark, 2017 O.J. (L 154) 1.

[23] Case T‑672/16, C=Holdings BV v. EUIPO, ECLI:EU:T:2018:926.

[24] The Trade Marks (International Registration) Order, No. 714, 1996 (UK).

[25] The Trade Marks (International Registration) Order, §13(1), No. 714, 1996 (UK).

[26] The Trade Marks Act, §46, 1994 (UK).

[27] The Trade Marks Act, §47, 1994 (UK).

[28] The Trade Marks Act, 1994 (UK).

[29] The Trade Marks (International Registration) Order, §13(4), No. 714, 1996 (UK).

[30] The Trade Marks Rules, Rule 38, No. 1797, 2008 (UK).

[31] The Trade Marks Rules, No. 1797, 2008 (UK).