Procedure for and duration of trademark registration
This section corresponding to section 18 of the Trade and Merchandise Marks Act, 1958.
Summary of the Provision in this chapter
Chapter III deals with the procedure for registration and its duration. The stages prior to registration under section 23 are set out in sections 18 to 22. The application is made under section 18. The trademark registration is made under section 23. Section 24 provides for jointly owned trademarks. Section 25 provides for the duration, renewal and restoration of registration.
Section 18 – Scope and Procedure under
The application should be made by the person claiming to be the proprietor of a trademark. The application should be signed by the applicant. If it is a partnership, the application shall be signed by at least one of the partners. Application for the registration of the same trademark in different classes shall be treated as separate and distinct applications, and in all cases where a trademark is registered under the same official number for goods in more than one class, whether on conversion of the specification under rule 105 or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate, registration for all the purposes of the act.
Procedure to be followed by registrar
The procedure to be followed by the registrar is set out in rules 37 and 38. Irrespective of whether an application is for registration of the mark in part A and B of the register. The tribunal has to consider the extent to which a trademark is inherently distinctive or is inherently capable of distinguishing the goods of the applicant.
The petitioner sought trademark registration for goods and services. Letter or examination report was not forwarded to the petitioner or its advocate. It was simply placed on website of the respondent, register of trademarks. The respondent is under obligation to communicate any objection or proposal in writing to the applicant. Rule 38(4) of the Trademarks Rules, 2002 by itself does not require the applicant for registration in respect the respondent’s website.
Living persons or persons recently dead
Where the name or representation of any person appears on a trademark, the applicant shall, if the registrar so requires, furnish him with the consent in writing of such person in case he is living or, in case his death took place within 20 years prior to the date of the application for trademark registration. The name of representation and in default of such consent, the registrar may refuse to proceed with the application for registration of the mark.
Applicant – What to do?
Before filing the application it will be helpful for the applicant to apply the registrar for preliminary advice under section 103, as to whether the trademark appears to the registrar prima facie to be inherently adapted to distinguish or capable of distinguishing as the case may be. He will also do well to bear in mind the relevant sections in the act relating to requisites for a valid registration, prohibition of registration, etc.
Claiming to be the proprietor
The expression means “claiming to be registered as the proprietor” and involves the assertion that there is no one else having a better claim to be registered. In the case of a trademark not in use there can be no such thing as proprietor of the mark. The expression therefore refers to the qualification of the applicant to register. This he will have to make out and where he makes a false declaration, it will be ground for considering the application to be fraudulent or dishonest disentitling the applicant to registration under section 11.
In such a case it will prevent a registration becoming conclusive after seven years under section 32. An exception to this section is provided by section 45 which permits an application to be made by a person who does not use or propose to use the trademark but who, to the satisfaction of the registrar, proves his intention to assign the trademark to a company which is about to be formed and registered under the companies act with a view to enable the company to use the mark in relation to the particular goods.
If the claim is made in good faith the application should be received even though it may turn out subsequently that there are objections to the registration. Where the opponents had previously put forwarded a claim to be the proprietors of the identical trademark but withdrew their application for registration.
Claim to Proprietorship
Application for trademark registration MICON in respect of Mycro Processor Control System was made while the opponent used the trademark MICO since 1950. Applicants were not having proprietory rights in trademark.
Not claiming to be the proprietor
The test for the purpose of determining whether a trademark claimed by a person other than the manufacturer of goods is registrable or not-Is the trademark used in respect of something done in the process of manufacturing or finishing the goods before they reach the hands of the public, or is it some process applied to the goods.
Used or proposed to be used
The term “use of mark” defines old section 2(2) (a) and (b). Reference to use a mark has to be construed as a reference to the use of printed or other visual representation of the mark and reference to the use of a mark in relation to goods shall be construed as a reference to the use of the mark upon or in any physical or in any relation whatsoever, to such goods.
In the case of a permitted user of a trademark, his use being only a permitted use, he cannot make the application except jointly with the proprietor.
Only a person claiming to be the proprietor of a trademark used by him or proposed to be used by him can make an application to the registrar for the registration thereof. According to the provision, not only a person should claim to be the proprietor of a trademark but also he should prove that he has used it as such proprietor on his goods. A sole distributor is not as such entitled to apply for registration.
The manner in which the application must be made is laid down in the rules framed under the act.
The fee payable on an application under this section is Rs.2500.
Application to be confined to one class
An application under this section shall not be made in respect of goods comprised in more than one prescribed class of goods. Goods for the purposes of this act are set out in the IV Th Schedule to the Trademarks Rules, 2002 framed under the act.
The reasons which may govern the Registrars decisions may relate to the provisions of (old) section 9 to 12. Other reasons whether are applicant is entitled to apply under this section, whether the application is in a proper form or whether it must be deemed to have been abandoned or whether there is valid reason for opposition. When, as a result of finding that there is no reasonable probability of confusion occurring by a reason of rival trademarks being deceptively similar, the registration cannot be refused under old section 12. The question of exercising discretion under section 18 against registration can and would arise. If probabilities of confusion are not so large, the application for registration cannot be refused under section 12 of the act. But a mere existence of probabilities is not sufficient to justify exercise of discretion against registration.
There is no absolute right to registration and the registrar has discretion to refuse registration. The discretion has been vested in the registrar under (old) section 18(4) for protection of the interests of the general public, it is clear that the discretion has been vested under section 18(4) so that the tribunal can satisfy itself that the registration of the marks would not operate as a fraud on the general public.
Communication of Decision and Further Procedure
The decision of the registrar shall be communicated to the applicant in writing and, if the applicant desires to appeal. In a case where the registrar makes any requirement to which the applicant does not object, the applicant shall comply therewith before the registrars’ issues a statement in writing.
Expenses Incurred for registration
These may be considered to be expenses laid out wholly for the purpose of the business which the trader has been carrying on.