Economic, Commercial and Intellectual Property Laws · Law relating to Trade Marks

Appeals and Special Provisions under the Trade Marks Act, 1999

Updated 11 October 2026 · Fact-checked

This topic covers how you challenge a Registrar's decision under the Trade Marks Act, 1999, and three special regimes: collective marks, certification trade marks and Madrid Protocol international registration. Solve questions by naming the provision, applying it to the facts, and stating a clear conclusion.

Understand Appellate Board, Appeals and Special Provisions

A trade mark application is decided first by the Registrar. If a party is unhappy with the decision, the Act provides a route to a higher forum. The supplied text of section 71(3) does not set out that route. It shows only that Act 33 of 2021, with effect from 4 April 2021, replaced the word "tribunal" with "Registrar or the High Court, as the case may be". That sub-section says who must have regard to the like considerations as under section 18 when dealing with a certification mark application. It is not an appeal provision. For the appeal forum, study the appeal provision of the current Act as amended in 2021, and do not rely on older notes that name the old appellate board.

The Act also has special provisions for certain kinds of marks. A collective mark belongs to an association of persons. Under section 61, the Act applies to it, but the idea of distinguishing the goods or services of one person from others is read as distinguishing those of the members of the association from others. Think of a trade association whose members all use one mark.

A certification trade mark shows that goods or services meet a standard. The proprietor certifies, and others use the mark with authority. Under section 71, you apply to the Registrar with a draft of the regulations governing use. Sections 18, 19 and 22 apply, but references to acceptance are read as authorisation to proceed. Under section 74, regulations must be filed at the Trade Marks Registry. They cover when the proprietor certifies goods or services and authorises use. They can be altered by the Registrar on the proprietor's application, and the Registrar may advertise that application so that opposition can be heard. Under section 78, valid registration gives exclusive right to use the mark for those goods or services, subject to conditions and limitations. Section 69 lists provisions that do not apply to certification marks.

The third area is international registration under the Madrid Protocol, in the Madrid Protocol Chapter of the Act (sections 36A onwards). Section 36B defines terms: a basic application is an application under section 18 used as the base, a basic registration is a registration under section 23, and the International Bureau is that of WIPO. Section 36D covers applications from India. Section 36E covers international registrations that designate India.

Both sections have a five-year dependency rule, often called central attack, but they apply to different base marks. Under section 36D(5), if within five years of the international registration the Indian application under section 18 or registration under section 23 is withdrawn, cancelled, expired or finally refused, the international protection ceases to have effect to that extent. Under section 36E(8), the same consequence follows if the basic application or basic registration in a Contracting Party other than India meets that fate within five years, and the protection in India ceases to have effect. The proviso on a pending appeal, withdrawal action or opposition appears only in section 36D(5). Section 36E(8) has no such proviso. Learn this rule, as it is a favourite question.

Key rules to remember

Amendment in s. 71(3): "tribunal" replaced by "Registrar or the High Court, as the case may be" (Act 33 of 2021, w.e.f. 4-4-2021); This is only a substitution of words in section 71(3). It is not an appeal provision, so do not use it to name the appeal forum.
Collective mark (s. 61): Mark of an association of persons; distinguishes goods or services of its members from others; The rest of the Act applies subject to this Chapter.
Certification mark application (s. 71): Application to Registrar + draft regulations; ss. 18, 19, 22 apply with "acceptance" read as "authorisation to proceed"; Applicant is the person proposed to be registered as proprietor.
Regulations of certification mark (s. 74): File regulations at Registry; alteration by Registrar on proprietor's application; opposition heard if notice given; Regulations are open to inspection as the register is, under section 148.
Rights in certification mark (s. 78): Valid registration = exclusive right to use, subject to ss. 34, 35, 76 and registration conditions; Rights are subject to conditions and limitations of the registration.
India designated: refusal time (s. 36E(2)): Refusal must be communicated to the International Bureau within 18 months of receiving the advice; Registrar may hear the applicant if he so desires. This 18-month limit is for refusal.
Deemed extension of protection (ss. 36E(3), 36E(5)): Registration advertised (36E(3)) + no opposition + opposition time expired + no notice of acceptance to the International Bureau within 18 months of receipt of advice → protection deemed extended; All four conditions must be met. The 18 months run from receipt of the advice. Deemed extension is not refusal.
Five-year dependency: Indian base (s. 36D(5)): Indian application (s. 18) or registration (s. 23) withdrawn, cancelled, expired or finally refused within 5 years of the international registration → international protection ceases to that extent; Proviso, found only in 36D(5): if an appeal, withdrawal action or opposition began within the five years, a later final decision is deemed to have occurred within the five years.
Five-year dependency: foreign base (s. 36E(8)): Basic application or registration in a Contracting Party other than India withdrawn, cancelled, expired or finally refused within 5 years → protection in India ceases to have effect; Applies to all or some of the goods or services. Section 36E(8) has no pending appeal or opposition proviso.

How to solve Appellate Board, Appeals and Special Provisions questions

Use this method for any question on appeals, special marks or Madrid Protocol.

1Identify the heading: appeal, collective mark, certification mark, or Madrid Protocol (India as origin or as designated country).
2State the governing provision in plain words, with the section number only where you are sure of it.
3For appeals, name the Registrar's decision, state the appeal forum from the appeal provision of the current Act, and do not infer it from the 2021 substitution in section 71(3).
4For special marks, state who the proprietor is, what the mark does and which sections are modified or excluded.
5For Madrid questions, decide the direction: section 36D if the application originates from India, section 36E if India is designated.
6Apply the facts: count the 18 months or the five years, and check the status of the base application or registration.
7Write a clear conclusion that answers the exact question asked.

Quickest way: Direction and clock check

When to use it: Use this when you have a short problem on Madrid Protocol or a time-limit question.

Ask: did the mark start in India (36D) or is India only designated (36E)?
If India is designated, check whether the Registrar refused and communicated it within 18 months of receipt of the advice (36E(2)).
If there was no refusal, check whether the registration was advertised (36E(3)), no one opposed and the opposition time has expired. Only then does 36E(5) apply: if no acceptance was notified within 18 months of receipt of the advice, protection is deemed extended.
Check what happened to the base application or registration within five years: an Indian base under 36D(5), a base in another Contracting Party under 36E(8).
Conclude: protection ceases to that extent, continues, or is deemed extended.

Common mistakes in Appellate Board, Appeals and Special Provisions

Naming the appeal forum from section 71(3) or from old notes.
Section 71(3) mentions the High Court, and older books still use the old forum.
Fix: Section 71(3) only shows that "tribunal" was replaced by "Registrar or the High Court". State the appeal forum from the appeal provision of the current Act.
Mixing sections 36D and 36E.
Both deal with international registration and have similar five-year rules.
Fix: 36D is applications originating from India, with an Indian base. 36E is registrations where India is designated, and its five-year rule concerns a base in a Contracting Party other than India.
Saying the Registrar must always refuse after 18 months or that silence means refusal.
Students remember the 18 months but mix up the refusal route with the acceptance route.
Fix: Under 36E(2), a refusal must be communicated to the International Bureau within 18 months of receipt of the advice. Deemed extension under 36E(5) applies only if the registration was advertised (36E(3)), unopposed, the opposition time has expired and no acceptance was notified within 18 months. In that case silence means protection is deemed extended, not refused.
Treating a certification mark like an ordinary mark for the proprietor's own goods.
The word trade mark suggests use by the owner.
Fix: Remember the proprietor certifies and authorises use by others under filed regulations (section 74), and section 69 disapplies some ordinary provisions.
Ignoring the proviso to section 36D(5), or applying it to section 36E(8).
Students stop reading at the five-year rule, or assume both sections are identical.
Fix: Add that, under 36D(5) only, where an appeal, withdrawal action or opposition began within five years, a final decision is deemed to fall within the five years.
Saying a collective mark belongs to any one member.
Confusion with ordinary marks.
Fix: State that the proprietor is an association of persons, and the mark distinguishes its members' goods or services.

Worked examples

Example 1

A Mumbai company holds an Indian registration under section 23 and obtains an international registration based on it. Within three years, its Indian registration is finally cancelled. What is the effect on the international registration?

Show the solution

The Indian registration is the basic registration, and the international application originated from India, so section 36D applies.
Section 36D(5) says that if, within five years of the international registration, the basic registration is cancelled in respect of all or some goods or services, the protection resulting from the international registration ceases to have effect.
Cancellation here occurred in year three, which is within five years.
The cessation applies to the goods or services in respect of which the basic registration was cancelled.

Answer: The protection resulting from the international registration ceases to have effect, to the extent of the goods or services for which the Indian registration was cancelled.

Example 2

The Registrar receives advice from the International Bureau designating India for a foreign proprietor's mark. No refusal is communicated under section 36E(2). The Registrar advertises the international registration, no opposition is filed and the opposition time expires. The Registrar then does not notify the International Bureau of acceptance within eighteen months of receipt of the advice. What is the position?

Show the solution

India is designated, so section 36E applies.
Under 36E(3), the Registrar, finding nothing to refuse, causes the international registration to be advertised. Here this was done, and no one opposed within the time allowed.
Under 36E(5), when the protection has not been opposed and the time for notice of opposition has expired, the Registrar is to notify the International Bureau of acceptance within 18 months of receipt of the advice.
The Registrar failed to notify within that period, and the same sub-section then deems that protection has been extended.
No refusal was communicated within 18 months under 36E(2), so nothing prevents this result.

Answer: Protection is deemed extended to the trade mark in India, because the registration was unopposed, the opposition time expired and the Registrar failed to notify the International Bureau within 18 months of receipt of the advice.

Exam tips

For the appeal forum, cite the appeal provision of the current Act. Mention the 2021 substitution of "tribunal" in section 71(3) only for what it shows, not as the appeal rule.
Learn the two Madrid time limits, 18 months and five years, and attach each to the right section.
For certification marks, structure your answer as application (71), regulations (74), rights (78) and exclusions (69).
Use the ICSI answer pattern: provision, application to facts, conclusion.

Practice questions from Law relating to Trade Marks

Appellate Board, Appeals and Special Provisions in other exams

The same ground in other exams, if you are preparing for more than one or want another angle on it.

Appellate Board, Appeals and Special Provisions: frequently asked questions

Who hears trade mark appeals now?

The supplied text of section 71(3) does not answer this. It only shows that the word tribunal was replaced by the Registrar or the High Court from 4 April 2021. For the appeal forum, read the appeal provision of the current Act as amended in 2021.

What is the difference between a collective mark and a certification mark?

A collective mark is owned by an association and distinguishes its members' goods or services. A certification mark is owned by a proprietor who certifies goods or services and authorises others to use the mark under filed regulations.

What is the Madrid Protocol under the Trade Marks Act?

It is a system for international registration of marks through the International Bureau of WIPO. The Madrid Protocol Chapter of the Act (sections 36A onwards) applies it in India. You file a basic application or hold a basic registration in India and designate other Contracting Parties.

What is the five-year rule in international registration?

Under section 36D(5), if the Indian application or registration on which an international registration is based is withdrawn, cancelled, expired or finally refused within five years, the international protection ceases to that extent. Section 36E(8) gives a similar rule where the base application or registration is in a Contracting Party other than India, and protection in India then ceases. The proviso on a pending appeal or opposition is found only in section 36D(5).