Obtaining a trademark requires a business to submit making necessary forms with the Trademarks Registry in India (detailed procedure is governed under the Trade Marks Act, and is available here). Unfortunately very few businesses have remained local today –

This presents a huge problem for Indian exporters. However, the protection offered to the registered proprietor of the trademark under this law extends to India alone.

Traditionally, trademarks granted by a particular country served to protect the interest of the proprietor only in that country. Any person interested in protecting his trademark internationally was thus required to file for trademark registration in each individual country where such protection was sought. This not only caused multiplicity of applications and inconvenience to the potential applicant but also increased costs for him. This was sought to be redressed by the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 1989 (Madrid Protocol).

 

Madrid Protocol

The Madrid Protocol is an international treaty that forms a part of the Madrid System for the international registration of marks. It was brought to put an end to the onerous requirement of registering trademarks individually in every country by a potential proprietor. It enables the trademark owners to have their trademarks protected in any of the countries that have joined the Madrid Protocol by filing a single application, called an ‘international application’. An international trademark so registered is treated at par with a domestically registered mark in countries designated by the applicant for this purpose. Thus, the protocol provides a cost-effective way for individuals and business concerns to ensure protection of their marks in multiple countries by filing a single application, in a single language (English, French or Spanish), at a single office (International Bureau of WIPO, Geneva), with a single set of fees, in a single currency (Swiss Francs).

At the very outset, it is important to note that the Madrid Protocol does not provide for an ‘internationally effective’ or ‘internationally enforceable’ trademark but for ‘international registration’ of a trademark. Thus, a mark which is filed for an international registration does not by itself become a protected trademark in each of the designated countries. Rather, once an applicant applies for seeking protection in member countries, each of the countries apply their own rules and laws to determine whether the protection may be granted to the mark. Thus, while an International Registration may be issued pursuant to the Protocol, it remains the right of each country to register the mark. It is only after the designated trademark office in a country grants protection that the mark gets the necessary protection in that country.

The Madrid system has not only eased the procedure of applying for the trademark but also simplified its subsequent management. For instance, it provides for recording subsequent changes to the mark and renewal of the mark through a single application.

The Protocol currently has 90 countries as parties, with the most recent being India, which became a member in April, 2013. Other prominent countries which have signed the Protocol are China, the European Union, France, Germany, United Kingdom and United States of America. The complete list of the Contracting Parties may be found online at the WIPO website.[1]

Procedure to be followed by applicants in India

India acceded to the Madrid Protocol on April 8, 2013 and became one of the 90 member countries of the Protocol. The Treaty will enter into force with respect to India on July 8, 2013.Even before India formally became a party, the Trademarks Act, 1999 had been amended by the Indian Parliament earlier in 2009 to give effect to Madrid Protocol. The Trade Marks Act (Amendment) Act, 2010 added a new chapter, Chapter IVA, which inserted special provisions relating to protection of trademarks through international registration.

Procedure for international registration of marks

An applicant who wishes to apply for an International Registration from India must first apply for trademark protection in the domestic trademark office like any domestic trademark registration (basic registration) as the international application is based on such basic mark.[2] Thereafter, he must make an international application to the National Office on Form MM2[3] prescribed by the Protocol. The application form may be filled out in English, Spanish or French. This form requires the applicant to specify in how many classes are grouped the goods or services covered by the mark, the countries in which protection is sought and other such details regarding colors, etc. The application form is subject to the payment of a certain fee which may be payable to WIPO directly or through the National Office which may charge an additional handling fee. The handling fee should be as specified in first schedule and shall be payable to the Registrar. It shall be paid in Indian Rupees electronically along with the application.[4] The fee that may be imposed in each application may be calculated on the WIPO website.[5] If the Registrar is satisfied that the application fulfills the prescribed substantive and form requirements, the domestic Office forwards the application to the International Bureau (IB) for registration.[6]

The Registrar’s Office is required to forward the application to the IB no later than two months from the date of receipt of the application by the Office.[7] This initial date is deemed to be the date of international registration too. The IB checks if application complies with the necessary requirements of the Protocol, form requirements under the Protocol Rules and other administrative requirements. If any irregularities are found, they are communicated to the Office of origin and the applicant.[8] Such defects must be removed within a period of three months, failing which the IB considers the application to be abandoned.

On being satisfied with the application, the IB records the mark filed before it, publishes it in the official Gazette and notifies the international registration to the relevant Offices of all the countries where the protection is sought, asking for their approval.

Any notice or communication relating to an International application and registration where India has been designated shall be communicated between the applicant and the Registrar in electronic form.[9] Similarly, if the International application originating from India or any other communication regarding the common regulations shall be filed electronically through the Trademark International Application System.[10]

The Offices of the designated countries then further examine the mark in accordance with their domestic procedure for a direct national application. If any grounds for refusal are found, they are communicated to the IB before the expiry of 18 months from the receipt of the notification. If no objections are expressed to the IB within this period, the mark is deemed to be registered in that country. An applicant who is refused a trademark in a country designated by him has been given appropriate remedies under the domestic laws of that country.

On completion of the aforementioned procedures, the designated countries send a statement to the IB notifying them whether the protection is granted, partially withdrawn or completely withdrawn, which is subsequently published in the Gazette by the latter. Accordingly, the mark is then deemed to be protected in all such countries which have agreed for the same.

On receiving an advice from International Bureau about an International registration designating India and notification about the extension of the protection shall be entered by the Registrar electronically in a record called “Record of particulars of International registration”[11]

Duration of protection and subsequent renewal

The protection granted by international registration extends for a period of 10 years. However, a trademark holder may further apply for a renewal of protection by filing an application in Form MM11[12]before the IB and paying the requisite fee. Upon receiving such application and payment of fee, the protection is extended by a period of another 10 years.

Independence of international registration

Applicants must also keep in mind that for the first five years from the date of international registration, if the initial basic national registration ceases to have effect as a result of the decision of the national Office, or a Court or voluntary cancellation, the international registration will also cease to have an effect.[13]However, if the trademark ceases to have effect after the first five years have passed, there is no effect on the international registration as it becomes independent of the basic registration after five years of operation.

Subsequent designations and changes to the mark

The holder of an international registration can expand the geographical scope of the protection of his mark by filing for a subsequent designation. In order to further protect the mark in more countries, an application in Form MM4[14] must be made before the IB, accompanied by adequate sum of fee, by the holder or by the domestic Office of the holder.

Similarly, the Protocol also allows a holder to record a change in ownership (Form MM5),[15] cancellation of protection[16] (Form MM8), appointment of a representative[17] (Form MM12), and provides for licensing of the trademark[18] (Form MM14).

Advantages of the Madrid Protocol

i.            The Madrid Protocol is more convenient and cost efficient as a candidate has to pay one fee and could get his trademark registered in many different countries.

ii.            The Madrid Protocol also gives wider protection as compared to the Madrid Agreement. There are 90 members of Madrid Protocol whereas the Madrid agreement, which is 110 years older, has only 56 members. All except three member states of the Madrid agreement are part of the Madrid Protocol.

iii.            The language used in Madrid agreement must be French, whereas Protocol Applications may be in French, English or Spanish (which is obviously an advantage in non-French speaking jurisdictions i.e. India).

iv.            The Madrid Protocol makes the whole process less time consuming. Generally, it takes years to get trademark registered in one or more states but procedures followed under Protocol makes it speedier and smoother.

v.            If basic trademark application is refused, it can be converted into national applications without losing the original filing date (although it is an expensive procedure).

vi.            Any change in the details of the right holder (Eg. name, address etc) can be changed by sending one single document to the International bureau and no efforts have to be made at every national office.

vii.            Under the Madrid Protocol it is pretty easy to add and subsequently designate the member country at a later date under the same International registration. The filing and maintenance fees associated with the international registration are lower over time than maintaining several separate national registrations.

Disadvantages of Madrid Protocol in Indian scenario

i.            The Indian Trademarks registry has not been able to entertain the national filings because of the lack of manpower. Now the work would be maximized due to the introduction of the Madrid Protocol and it would be very difficult task to look into both National and International filings at the same time and with same manpower.

ii.            The Indian Trademarks Registry will have to process the International applications in 18 months as prescribed in the Protocol and due to which the process of the National filings will be delayed.

iii.            The Indian Trademarks Registry allows broad specifications of goods and services which would not be possible in other states.

iv.            Assigning the ownership of an International registration to entities residing or having a connection with non- Madrid Protocol state is prohibited under the rules of the Madrid Protocol. This is not good for India because it has business interests with several non-member countries and now it will have to file national applications to deal with these countries.

v.            If an Indian basic mark is cancelled or limited in first five years then the International mark will similarly be cancelled or limited. After the expiry of this five-year term, however, the international registration becomes independent.  The Indian Trademarks Registry has a huge number of trademark registrations and applications. More the applications more will be the chances of refusal. International applicants need to be very cautious before selecting any trademark and taking the route provided by the Protocol.

 

Conclusion

Thus, the Madrid Protocol has greatly helped individuals and business concerns that seek to register their marks in multiple countries in today’s age of increased cross-border trade. International registration offers several advantages for the owner of a mark. As discussed above, the owner is relieved of filing multiple applications having different requirements. Moreover, the applicant is not required to transact with the Offices of each individual country for confirmations, deadlines, etc. owing to the ‘one-stop-shop’ role played by International Bureau.  Thus, simply put, it provides speedy, cost-effective and wider protection to holders of a mark.

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[1] For the complete list of parties, visit http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=8.

[2]Trade Marks Act, 1999, § 36D (1).

[3] Form MM2 may be found at http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm2.pdf.

[4] Trade Marks Amendment Rules, 2013, § 67F.

[5] Fee may be calculated at http://www.wipo.int/madrid/en/fees/calculator.jsp.

[6]Supra note 1, § 36D (4).

[7]Madrid Protocol, art.3 (4).

[8] Common Regulations under Madrid Protocol, Rule 11.

[9] Trade Marks Amendment Rules, 2013, § 67C.

[10] Trade Marks Amendment Rules, 2013, § 67D.

[11] Trade Marks Amendment Rules, 2013, § 67G.

[12] Form MM11 may be found at http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm11.pdf. See also supra note 6, Rules 29-31.

[13]Supra note 1, § 36E (8).

[14] Form MM4 may be found at http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm4.pdf.

[15] See

[16]Supra note 6, Rule 25.

[17]Id., Rule 25.

[18]Id., Rule 20bis.

Entitlement

The following annual leaves with pay are applicable for the employees:

Earned/Privileged Leaves (after every twelve months’ continuous employment): 15

EL is calculated as 1 day leave for every 20 days worked. This is a leave you earn after working for 20 days. A person earns it and it is accumulated. He can avail it only in the next year or working after 240 days. A trainee also earns this leave but he can not avail it during his training period. He can en-cash it if he resigns during this training period.

Casual Leaves (leave for urgent or unforeseen contingencies)           :           07

Sick Leaves     (Leave on account of sickness or illness)                    :           07

 

Apart from these, 11 Gazetted / Festival Holidays are also given to all the employees.

 

Close Day Holiday

Every shop and commercial establishment shall remain closed on a close day (which will be notified by the Government) and such day will be a holiday for the employees.

In addition to the close day every shop and commercial establishment shall remain closed on three of the National holidays each year as the Government may by notification in the Official Gazette specify.

 

Weekly Holiday

Every employee shall be allowed at least twenty-four consecutive hours of rest (weekly holiday) in every week, which shall, in the case of shops and commercial establishments required by this Act to observe a close day, be on the close day.

No deduction shall be made from the wages of any employee on account of the close day under section 16 or a holiday granted under section 17 of this Act.

Rules and Regulations of Leaves

The following are the rules and regulations of leaves, which are applicable on all employees.

1. Casual Leave cannot be availed more than 3 continuous days except in one occasion.
2. Sick Leave more than 3 days should be supported by a medical Certificate and Fitness Certificate to resume the duty, given by a registered Medical Practitioner / MBBS Doctor.
3. Leave should be applied on the prescribed format known as ‘Leave Application’.
4. It is necessary to apply for the leave in advance and important to get the sanction before proceeding on leave. Especially in case of Earned leave, prior sanctioning by the Head of Department is required, if the EL is upto 3 days, it is to be applied 24 hrs. In advance and if it is more than 3 days, it should be applied 7 days in advance.
5. Half-day (1^st/ 2^nd) leave can be taken on in case of Sick Leave and Casual Leave only and not in Earned Leave.
6. Casual Leaves and Sick Leaves cannot be accumulated but Earned Leaves can be accumulated as per Factory act.
7. Any leave availed without the permission will be treated as absenteeism (hence no salary is payable for this period) and the proper action can be taken against the employee as per the standing orders of the company.
8. For new Joinees, all leaves are applicable and can be taken after joining the company on pro-rata basis
9. Any leave cannot be considered as ‘sanctioned’ before the approval of HOD.
10. Casual Leaves and sick leaves taken without prior sanction can be regularized as paid leaves by HOD but Earned Leave can only be regularized as paid leaves by Director/ or any other authorized by them.

 

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Imagine you want to set up an international business, and serve clients across the world. Should you set up business presence in an SEZ? What factors determine whether you should relocate to an SEZ? Understand relevant strategic factors to determine whether a business should be established in an SEZ or a domestic tariff area unit.
– from Sameer Jain, Partner, Pamasis Law Chambers.

This article is written by Tanay Khanna, a student of NLUO, on Central Sales Tax and its registration procedure.

This article is written by Tanay Khanna, a student of NLUO

What is a Private Limited Company?

A limitedcompany is a type of company that offers limited liability, or legal protection for its members or subscribers. Their liability is restricted to what they have invested or guaranteed to the company. Limited companies may be limited by shares or by guarantee. However, there are certain restrictions on a private limited company which are specified in the company’s rules and bylaws. In a private limited company, shareholders can neither transfer/sell their shares before offering them to the other shareholders nor can they offer their shares to the general public over any stock exchange.

Advantages of a Private Limited Company

The most prominent advantage of a limited company is that the liabilities of its owner and shareholders are limited. In a proprietorship form of business, the owner’s personal assets can be at risk in the event of insolvency, but this is not the case with a limited company. This is advantageous because unwelcome events like insolvency are not always under the owner’s control; therefore it becomes necessary to protect the personal assets of the businessman in the event of crisis.

A private limited company is considered as a different legal entity/ juristic person established under the Companies Act. It has its presence separate from its chiefs and parts. Private Limited Company status empowers you to be considered more important than a proprietorship/association status does. Working as a private limited company frequently gives suppliers and clients a feeling of trust in a business. Bigger associations specifically will incline toward in managing private limited company than proprietorship/organization associations. It is easy to draw-in quality workforce and attain strategic inspiration of employees by utilizing adaptable and extensive variety of management assignments. Moreover, sole proprietorships and partnerships pay income tax whereas limited companies pay Corporation tax on their taxable profits. There is a wider range of allowances and tax deductible costs that can be set-off against a company’s profits.

Another important feature of a private limited company is ‘perpetual succession’. It is a popular phrase that the directors may come and go the members may come and go, but the existence of a company remains forever. A company once incorporated remains alive unless and until it is wound up by following the procurements of Law. The demise, disability or dismissal of any of its members/shareholders does not affect the permanency of the company. Also, there is no compulsion for a Private limited company to start business/trading within any prescribed time period after its incorporation.

Private limited companies are also much easier to sell. Where it is proposed to sell the business as a going concern, all that is required is to transfer the entire shareholding to the purchaser and thus facilitate with the change in management and administration of the company. This will not affect the business activities of the company.

Procedure to incorporate a private limited company

For incorporation of a private limited company there must be at least 2 promoters, who will promote/incorporate the company. They can be individuals or corporate body. Another requirement is that there must be at least two directors. They can only be individual and not a corporate body or partnership firm. Generally in maximum cases directors and promoters are same individuals. Now to apply for the directorship of a company, firstly individuals will have to apply for DIN i.e. Director Identification Number in form DIN 3 along with affidavit of Rs. 10 (this may differ from state to state) as an attachment along with copy of PAN card and address proof which should either be notary attested or self-attested. This form: DIN 3 has to be attested by a professional i.e. CA/CS/CWA who will certify the photograph and that the documents attached are the true copy of the original documents. Then DIN 3 will be applied to the concerned authority.

One of the directors must have digital signature which can be attained by any of the DSC vender i.e. TCS/ Sify/ etc. These venders are known as certifying agencies who are duly recognized by the Controller of Certification Agencies (CCA) under the provisions of IT Act, 2000.

The promoters will have to apply for the name of the company to be approved with the concerned RoC of the State, where the company has to be formed in e-form INC 1 (Rule 9). This has to be done by the payment of Rs. 1000 through Credit Card or Net Banking, describing the capital of the company, state in which the company has to be incorporated and its main objectives. The promoter can apply for 6 names amongst which the RoC will approve only one. In case RoC rejects all the 6 names then the promoters will have two more chances to apply for the name again with the incurred fees while filing Form INC 1.

Once the name is approved, the promoters/directors will have to draft Memorandum of Association [Section 4(6)] and Article of Association [Section 5(6)]. In the MOA, the 5 clauses are mandatory i.e. Name Clause, Main object clause, capital clause (minimum capital required is Rs. 1,00,000) registered office clause and subscribers clause. The MOA shall be in respective form as prescribed in Table A, B, C, D and E of Schedule I to the Companies Act, 2013 as may be applicable.

And in AOA all the rules and By-laws of the company shall be in respective form as prescribed in Table F, G, H, I and J of Schedule I to the Companies Act, 2013 as may be applicable. The names of first directors are compulsory to be given in the AOA.

These MOA and AOA should be followed by the tables of subscribers which has to be signed by subscribers in their own handwriting along with the shares to be subscribed by them and against their name any person who will act as a witness will sign in the witness column. The subscribers will subscribe the shares in the company and will invest the minimum capital i.e. of Rs. 1,00,000. They can contribute by way of cheque or cash when the company gets incorporated and thus shares will be allotted to them.

After the AOA and MOA are drafted, form no. INC 7 will have to be filed with RoC (Rule 12-18) along with the article of association and memorandum of association. Directors will have to avail professional service i.e. from CA/CS/CWA to incorporate the company.A declaration, via Digital Signature, in Form No.INC.8 by an advocate or Practicing professional (CA, CS, CA) who is engaged in incorporation, and a person named in director as Director, Manager or Secretary, has to be attached with form INC 7 stating that all requirements related to incorporation has been complied with and all the document attached therein are genuine.

An affidavit in Form No. INC.9, has to be attached with form INC. 7, from each subscriber and from each person named as first director in the articles stating that he is not convicted of any offence in connection with promotion, formation or management of any company, he is not been found guilty of any fraud or misfeasance or of any breach of duty to any company during preceding five years, and all the documents filed with the Registrar contain correct, complete and true  information to the best of his knowledge and belief.

Form no.INC 7 will have to be filled along with the address for correspondence till its registered office is established, the particulars of every subscribers along with proof of identity, the particulars of first directors along with proof of identity, the particulars of interests of first directors in other firms or bodies corporate along with their consent to act as directors

The applicant will then make the payment of Govt. fees as well as stamp duty fees. If the fees is less than Rs.50,000 then through net banking or credit card and if it is more than Rs.50,000 then it can be paid through challan to be deposited in a bank. The E-forms the will be verified by the RoC at their level. If the E-forms are found to be genuine and gets approved by Roc, Certificate of Incorporation will be generated and will be dispatch online at the email id of the person/entity given in the e-forms.

According to Section 11 of the Act, after the commencement of the business activities of the company the Directors shall have to file a declaration with RoC in Form No. INC.21 (Rule 24) and in consonance with Section 12 a company must  have a registered office within 15 days of Incorporation and it shall file Form No.INC.22 (Rule 25) to verify the same.