REGISTRATION OF TRADE MARK

[Mr. M. GOVINDARAJAN]

Definition

Section 2(1)(zb) of the Trade Marks Act, 1999 (‘Act’ for short) defines the term ‘trade mark’ as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors and-

• in relation to Chapter XII (other than Section107) (Chapter XII provides for offences, penalties and procedure), a registered trade mark or a mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
• in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.

Registered trade mark

Section 2(w) of the Act defines the term ‘registered trade mark’ as the trade mark which is actually on the register and remaining in force.

Application for Registration

Section 18 of the Act provides that any person, who is claiming to be the owner of the trade mark used or proposed to be used by him, shall apply in writing to the Registrar in the prescribed form for the registration of trade mark.  A single application may be made for registration of a trade mark for different clauses of goods and services and fee payable thereof shall be in respect of each such class of goods or services.

The 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 on in the case of joint applicants the principle place of business in India of the applicant whose name is first mentioned in the application is situate.  Where the applicant(s) do not carry on business in India the application shall be filed in the office of Trade Marks Registry within whose territorial limits the place mentioned in the address for service India as disclosed in the application, is situate.

Subject to the provisions of the Act the Registrar may accept the application in absolutely or subject to such amendments, modifications, conditions or limitations, if any he may think fit or reject the application.  In 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.

Withdrawal of acceptance

Section 19 of the Act provides that where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied that-

• the application has been accepted in error; or
• 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

After the application is accepted or before its acceptance the law casts an obligation on the Registrar to advertise the mark.   The manner of advertisements is prescribed in the rules.  The Registry publishes a journal called the Trade Marks journal once in a fortnight and also sometimes supplementary journals.  The conditions or limitations, if any, subject to which the application has been accepted shall also be placed in the advertisement.  After publishing an advertisement, if any error is found in the acceptance of application, then instead of causing the application to be advertised again, the correction or amendment made may be notified.

Opposition to the application

Section 21 of the Act prescribes the procedure for opposing the trade mark to be registered.  The limitation period for raising such objection is four months from the date of advertisement or re-advertisement of an application for registration.  A person who wants to raise objection shall give notice in writing in the prescribed manner on payment of the prescribed fee to the Registrar.

The Registrar shall serve a copy of the notice on the applicant.  Within two months from the receipt of the opposition the applicant shall send to the Registrar a counter statement of the ground on which he relies for his application.   If he does not do so he shall be deemed to have been abandoned his application.

The Registrar, if the applicant sends counter statement, shall send a copy of the counter statement to the person who opposes the registration of the said trade mark.  The Registrar shall give opportunities to the applicant and to the opposer.

The Registrar shall, after hearing the parties 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.    The Registrar may, on request, permit correct of any error in, or any amendment of, a notice of opposition or counter statement on such terms as he thinks just.

Registration

Section 23 provides for registration.   When an application for registration of a trade mark has been accepted and either-

• the application has not been opposed and the time for notice of opposition has expired; or
• the application has been opposed and the opposition has been decided in favor of the applicant,

the Registrar shall, unless the Central Government otherwise directs, register the said trade mark within 18 months of the filing of  the application and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provision of Section 154, be deemed to be the date 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 with the seal of Trade Marks Registry.  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.

Grounds for refusal of registration

Section 9 provides the grounds for refusal of registration of trade marks as detailed below:

• The trade marks-

• Which are devoid of any distinctive character, not capable of distinguishing the goods or services of one person from those of another person;
• Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
• Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.

shall not be registered.  A trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as the result of use made of it or is a well known trade mark.

• A mark shall not be registered as a trade mark if-

• It is of such nature as to deceive the public or cause confusion;
• It contains or comprises of any matter likely to hurt the religious susceptibilities of any class of section of the citizens of India;
• It comprises or contains scandalous or obscene matter;
• Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

• A mark shall not be registered as a trade mark if it consists exclusively of-

• The shape of goods which results from the nature of goods themselves; or
• The shape of goods which is necessary to obtain a technical result; or
• The shape which gives substantial value to the goods. 

For this purposes, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.

Duration of trade mark registered

The registration of a trade mark shall be for a period of 10 years.   It may be renewed from time to time.