Procedure For Registration of Trademark, Its Duration , Removal ,
Restoration and Renewal of Trademark
Who can File application?
According to Section 18 (1) Any person claiming to
be proprietor of trademark used or proposed to be used by him, may apply in
writing to the registrar in the prescribed manner for registration of his
trademark.
Single application for different classes of goods and services.
S.18(2) A single application may be
made for registration of a trademark for different classes of goods and
services and fee payable therefor shall be in respect of each such class of
goods or services.
Where a single application under
section 18(2) is filed from convention country for more than one or more
classes of goods or services, the applicants shall establish a sufficient
ground to the satisfaction of Registrar for the date of filing of application
in all such cases.
Where to file Application?
S.18(3) Every application shall be
filed in the office of the Trade Marks Registry within whose territorial limits
the principal place of business in India of the applicant or in the case of
joint applicants the principal place of business in India of the applicant
whose name is first mentioned in the application as having a place of business
in India, is situate:
However, that where the applicant or
any of the joint applicants does not carry on business in India, the
application shall be filed in the office of the Trade Marks Registry within
whose territorial limits the place mentioned in the address for service in
India as disclosed in the application, is situate.
Acceptance or Refusal Of Application.
S.18(4) : The Registrar may refuse the
application or may accept it absolutely or subject to such amendments,
modifications, conditions or limitations, if any, as he may think fit.
S.18 (5) : In the case of a refusal or
conditional acceptance of an application, the Registrar shall record in writing
the grounds for such refusal or conditional acceptance and the materials used
by him in arriving at his decision.
According to Section 46 No
application for the registration of a trade mark in respect of any goods or
services shall be refused nor shall permission for such registration be
withheld, on the ground only that it appears that the applicant does not use or
propose to use the trade mark if the Registrar is satisfied that—
(a) a
company is about to be formed and registered under the Companies Act, 1956 (1
of 1956) and that the applicant intends to assign the trade mark to that
company with a view to the use thereof in relation to those goods or services
by the company, or
(b) the
proprietor intends it to be used by a person, as a registered user after the
registration of the trade mark.
P.M. Diesels Pvt. Ltd.
vs Thukral Mechanical Works & ANR
Bona fide use of a registered trademark as
postulated by Section 46(1)(b) of the Act can only be by the
proprietor thereof or any person authorized by that proprietor.
Conversely, a person other than a registered
proprietor, or somebody authorized by that registered proprietor, cannot be
said to be a bona fide user of the registered trademark he will be an infringer
of the trademark.
Therefore Section 18 of the Act clearly has no
relevance. That section deals with an application for registration of an
unregistered trademark. It is possible that a person may use a trademark
without actually registering it but that has absolutely no concern
with Section 46(1)(b) of the Act, which deals with a case where the
trademark is in fact registered. Therefore, no reliance can be placed
upon Section 18 to interpret Section 46(1)(b) of the Act.
Correction
and Amendment.
According to section 22, The Registrar
may at any time, whether before or after acceptance of an application for
registration permit the correction of any error in or in connection with the
application or permit an amendment of the application:
However, if an amendment is made to a
single application referred to in sub-section (2) of section 18 involving
division of such application into two or more applications, the date of making
of the initial application shall be deemed to be the date of making of the
divided applications so divided.
Intellectual Property Attorneys vs
Union Of India & Anr on 9 October, 2014
It was held the power vested in the Registrar
of Trademarks under Section 22 is a quasi-judicial
power.
It is so
contended, because:-
(i) the Registrar of Trademarks
is a Tribunal;
(ii) The Registrar of Trademarks has
all the powers of a Civil Court for the purposes of receiving evidence,
administering oaths, enforcing the attendance of witnesses, compelling the
discovery and production of documents and issuing commissions for the
examination of witnesses;
Also in Madan Mohan
Lal Garg Vs. Brijmohan Lal Garg AIR 1971 Delhi 313 it was held that
the Registrar, while dealing with an application for amendment and in deciding
whether or not to allow such amendment, acts quasi-judicially.
Withdrawal
of acceptance.
After the acceptance of an application
for registration of a trade mark but before its registration, the Registrar is
satisfied -
(a) that the
application has been accepted in error; or
(b) that in the
circumstances of the case the trade mark should not be registered.
or should be
registered subject to conditions or limitations or to conditions additional to
or different from the conditions or limitations subject to which the
application has been accepted,
the Registrar may, after hearing the
applicant if he so desires, withdraw the acceptance and proceed as if the
application had not been accepted.
Advertisement
of application.
According to section 20, When an
application for registration of a trade mark has been accepted, whether
absolutely or subject to conditions or limitations, the Registrar shall, as
soon as may be after acceptance, cause the application as accepted together
with the conditions or limitations, if any, subject to which it has been
accepted, to be advertised in the prescribed manner:
The Registrar may,
however, cause the application to be advertised before acceptance if it relates
to a trade mark to which sub-section (1) of section 9 and sub-sections (1) and
(2) of section 11 apply, or in any other case where it appears to him that it
is expedient by reason of any exceptional circumstances so to do.
Where -
(a) an application has been advertised before
acceptance; or
(b) after advertisement of an application, -
(i) an error in the application has been corrected; or
(ii) the application has been permitted to be amended under section 22,
the Registrar may in his discretion
cause the application to be advertised again or in any case falling under
clause (b) may, instead of causing the application to be advertised again,
notify in the prescribed manner the correction or amendment made in the
application.
Opposition to registration.
According to section
21, Any person may give notice of opposition to registration in writing to the
registrar within 4 months from the date of advertisement or re-advertisement
of an application.
Counter-Statement:
The Registrar shall
serve a copy of the notice on the applicant for registration and, within 2
months from the receipt by the applicant of such copy of the notice of
opposition, the applicant shall send to the Registrar a counter-statement of
the grounds on which he relies for his application, and if he does not do so he
shall be deemed to have abandoned his application.
If the applicant
sends such counter-statement, the Registrar shall serve a copy thereof on the
person giving notice of opposition.
Submission
of evidences:
Any evidence upon
which the opponent and the applicant may rely shall be submitted in the
prescribed manner and within the prescribed time to the Registrar, and the
Registrar shall give an opportunity to them to be heard, if they so desire.
The Registrar shall,
after hearing the parties, if so required, and considering the evidence, decide
whether and subject to what conditions or limitations, if any, the registration
is to be permitted, and may take into account a ground of objection whether
relied upon by the opponent or not.
Where a person giving
notice of opposition or an applicant sending a counter-statement after receipt
of a copy of such notice neither resides nor carries. on business in India, the
Registrar may require him to give security for the costs of proceedings before
him, and in default of such security being duly given, may treat the opposition
or application, as the case may be, as abandoned.
The Registrar may, on
request, permit correction of any error in, or any amendment of, a notice of
opposition or a counter-statement on such terms as he thinks just.
Registration
when an application
for registration of trade mark has been accepted and either-
(a) the application has not been opposed and the time for notice of opposition
has expired; or
(b) the application has been opposed and the opposition has been decided in
favour of the applicant,
the Registrar shall, unless the Central
Government otherwise directs, register the said trade mark .
The trade mark when registered shall be
registered as of the date of the making of the said application and that date
shall be deemed to be the date of registration.
Certificate of Registration:
On the registration of a trade
mark, the Registrar shall issue to the applicant a certificate in the
prescribed form of the registration thereof, sealed with the seal of the Trade
Marks Registry.
Abandonment of Application:
Where registration of a
trade mark is not completed within 12 months from the date of the
application by reason of default on the part of the applicant, the Registrar
may, after giving notice to the applicant in the prescribed manner, treat the
application as abandoned unless it is completed within the time specified in
that behalf in the notice.
The Registrar may amend the
register or a certificate of registration for the purpose of correcting a
clerical error or an obvious mistake.
Jointly
owned trade marks.
The Act
does not authorise the registration of two or more persons who use a
trade mark independently, or propose so to use it, as joint proprietors
thereof.
However, Where the
relations between two or more persons interested in a trade. mark are such that
no one of them is entitled as between himself and the other or others of them
to use it except-
(a) on behalf of both or all of them; or
(b) in relation to an article or service with which
both or all of" them are connected in the course of trade,
Then those persons may be registered as
joint proprietors of the trade mark.
The Act shall have effect in relation
to any rights to the use of the trade mark vested in those persons as if those
rights had been vested in a single person.
Duration,
renewal, removal and restoration of registration
DURATION:
The registration of a
trade mark shall be for a period of 10 years, but may be renewed from time to
time in accordance with the provisions of this section.
RENEWAL:
On application made by the
registered proprietor of a trade mark in the prescribed manner and within the
prescribed period and subject to payment of the prescribed fee, the Registrar
shall renew the registration of the trade mark for a period of ten years from
the date of expiration of the original registration or of the last renewal of
registration, as the case may be,
However, the Registrar shall not remove
the trade mark from the register if an application is made in the prescribed
form and the prescribed fee and surcharge is paid within six months from the
expiration of the last registration of the trade mark and shall renew the
registration of the trade mark for a period of ten years under sub-section (2)
RESTORATION.
According to section
25(4),Where a trade mark has been removed from the register for non-payment of
the prescribed fee, the Registrar shall, after six months and within one year
from the expiration of the last registration of the trade mark, on receipt of
an application in the prescribed form and on payment of the prescribed fee, if
satisfied that it is just so to do, restore the trade mark to the register and
renew the registration of the trade mark either generally or subject to such
conditions or limitations as he thinks fit to impose, for a period of ten years
from the expiration of the last registration.
REMOVAL OF TRADEMARK:
Before expiration of last registration
of trademark, the Registrar is duty bound to send notice at prescribed time and
in prescribed manner to the registered proprietor of the date of expiration and
the conditions as to the payment of fees and otherwise upon which a renewal of
registration may be obtained.
The registrar may remove the Trademark
from the register if at the expiration of prescribed time,those conditions have
not been duly complied with. The registrar shall advertise the fact in
the Journal.
M/S. Epsilon Publishing House vs Uoi
And Ors.: Learned Single Judge held as follows:-
It is necessary to note that the word used in
section 25(3) of the Act is 'may‟ and not 'shall'. The proviso to Section 25(3) is also couched in
negative language which proscribes the Registrar from removing the mark, if an application is made in the prescribed form and
prescribed fee and surcharge is paid within a period of six months. Thus, in
any event, the Registrar has to continue to retain the trademark on
the Register till the expiry of the period of six months from the expiry of
registration in order to provide a full play to the proviso to Section 25(3) of
the Act.
Thus, even if an application for renewal with the prescribed fees and surcharge is received within a period of six months from the expiry of the registration of the trademark, the Registrar cannot remove the trademark from the Register.
Thus, even if an application for renewal with the prescribed fees and surcharge is received within a period of six months from the expiry of the registration of the trademark, the Registrar cannot remove the trademark from the Register.
Effect
of removal from register for failure to pay fee for renewal
Section 26 provides that Where a trade
mark has been removed from the register for failure to pay the fee for renewal,
it shall nevertheless, for the purpose of any application for the registration
of another trade mark during one year, next after the date of the removal, be
deemed to be a trade mark already on the register, unless the tribunal is
satisfied either-
(a) that there has been no bona fide trade use of the
trade mark which has been removed during the two years immediately preceding
its removal; or
(b) that no
deception or confusion would be likely to arise from the use of the trade mark
which is the subject of the application for registration by reason of any
previous use of the trade mark which has been removed.
Some important forms:
Section
18(1),Rule 25(2) :
Application for registration of a trade mark for goods or services (other than
a collective mark or a certification trade mark) – TM-1
Section
21(1),64, 66, 73 : Notice of
opposition to an application for registration of a trade mark, collective mark
or certification trade mark. - TM-5
Section
21(2), 47, 57, 59(2): Form of counter
statement: TM-6
Section
25 Application
for renewal after expiry of last registration of a trade mark/collective
mark/certification trade mark: TM-12
25(4) :Application for
restoration of a trade mark removed from the register: TM-13
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www.thestepsworth.com
Email: stepsworth@gmail.com
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