REGISTRATION OF TRADEMARK

PROCEDURE FOR REGISTRATION

1.      Application for Registration

Section 18 of the Trade Marks Act 1999 says that any person, claiming to be the proprietor of a trademark used or proposed to be used by him, who is desirous of registering it shall apply in writing to the registrar in the prescribed manner for the registration of the mark.

Essential Ingredients for registration:

(i)                  Any person

Any person includes individual, partnership firm, association of persons, a company whether incorporated or not, a trust, Central or State Government. It does not allow the representative of the proprietor to apply in his own name.

(ii)                Claiming to be proprietor

A person may obtain proprietorship in a trademark either by use or by registration under this Act. He may also acquire proprietorship by assignment or by inheritance. In case of unregistered mark but in use, proprietorship will be the person who first used it in case of two rival claims whereas in case of proposed use of mark, which comes up for registration, the designer or the originator will be the proprietor in case of any controversy. Between two rival claims of user of the mark and designer of the mark the former will be preferred.

At this stage of making application, the proprietor has to show his bona-fide claim. If the mark is not mistaken on the face of application and also there is not objection to the claim, the registrar is entitled to accept the application

In case of manufacturer having a trademark abroad has made goods and imported them into this country with foreign mark on them, the foreign mark may acquire distinctive character and in such circumstances, the same or colourably similar mark cannot be registered not because it is registered abroad but because it lacks distinctiveness.

(iii)               Used or proposed to be used

The law permits registration of a mark, which has been or is being used or is proposed to be used. In case of proposer of the mark, he must have definite and present intention to use the mark as on the date of the application. Definite and present intention is different from the general intention to use the mark sometime in future to something, which he may think desirable later on. Definite and present intention means a real intention to use the mark for resolved and settled purpose. In case of used mark, the use in itself is not sufficient but is to be accompanied with real intention continue with the use.

The ‘proposed use’ of the trademark must be normal and fair, which, however, may include variations in presentation or colour difference but such variation should not stretched to far so that the used form will be totally different from the one sought to be registered. If proprietor does not have the real and present intention to use the mark, and try to register is for some mala-fide intention, such as to block the mark, it would amount to registration in bad faith[1], which is a serious form of commercial fraud.

The application for registration of the mark must be filed with the Registrar in the prescribed manner who has been conferred the discretion either to accept or reject or accept with amendments, modifications, conditions or limitations[2]. The Registrar must communicate his decision in writing with the applicant and is under obligation to give the reasons in cases of rejection or acceptance on conditions or with modification.[3]

2. Withdrawal of Acceptance

In case the Registrar decides to accept the mark for registration, but before actual registration, the Registrar may withdraw his acceptance under certain circumstances under section 19 of the Trade Marks Act 1999. For example, if the Registrar is satisfied that the application is being accepted in error or that circumstances are such that such registration should not be granted, he has been empowered to withdraw the acceptance of application. This power can be exercised subject to certain conditions. Registrar has to issue a notice, specifying the objections, which has led him to think that the application has been accepted in error or why the mark should not be registered, to the applicant and give him an opportunity of being heard by requiring him to show cause why acceptance should not be withdrawn.[4]

3. Advertisement of Application

Once the Registrar for registration has accepted the application, he shall get the application advertised in the prescribed manner after acceptance. However, the application shall be advertised before acceptance if the application is related to a trademark to which section 9(1) and 11(1)(2) apply or in any other case as it seems expedient to the Registrar.[5]  The purpose of advertisement is give information to the public at large in respect of the trademark advertised and afford an opportunity to oppose the registration of the mark on given grounds. So the advertisement must be complete in all respects and otherwise the very purpose of advertisement will be frustrated.[6] If there is incomplete or incorrect information in the advertisement, it would amount to misrepresentation, which deprives a prospective opponent of the opportunity to get full information and of filing an effective opposition.[7]

4. Opposition to Registration

Section 21 of The Trade Marks Act 1999 allows any person to oppose an application for registration. “Any person” need not be only a prior registered trademark owner.[8] Even a customer, purchaser or a member of the public likely to use the goods may object to the registration of a trademark in respect of such goods on the ground of possible deception or confusion. The period within which opposition to the application for registration can be filed is three month from the date of advertisement, which can be extended by Registrar not exceeding one month on application made to him and on payment of the prescribed fee. So the period cannot exceed four months in toto.

The grounds of opposition should be based upon the specific provisions of law. The grounds based on section 9, 11, 12, 13, 18, 24, 33, 35, 36(2) etc. would be suitable to challenge the application of registration. However, the grounds based on section 11(2) and (3) are available only to the proprietor of earlier trademark.[9]

On receiving the notice of opposition, the Registrar is under obligation to send a copy of the same to the applicant for registration. Upon receiving such notice, the applicant is given two months time, from the date of receipt of the notice, to file counter statement together with the prescribed fees to the registrar. This copy of counter statement shall be sent to the person who has filed opposition under section 21 (3). The applicant and the opponent are given the opportunity to adduce evidence in support of their claims and may also be given an opportunity to be heard if they so desire under Section 21 (4).[10] However the onus is on the opponent to allege and prove the existence of facts, which may lead the tribunal to assess the existence of likelihood of confusion in the minds of the public, which includes likelihood of association with the earlier mark. But this does not relieve the applicant of his onus to satisfy the Registrar or the court that there is no reasonable probability of confusion, in respect of all goods coming within the specification applied for and not only in respect of the goods on which he is proposing to use it immediately.[11]

5. Registration

Subject to Section 19 the Registrar is under obligation to register the Trade Mark under section 23 if he decides in favour of applicant after listening to the opposition. However, Central Government may direct otherwise on certain grounds. The mark can also be registered jointly for two or more persons under section 24 if two or more persons agree to work jointly. In such cases, the registrar shall require a copy of joint venture agreement to satisfy himself because none of them is entitled to use the mark independently. The section in its earlier part specifically precludes the Registrar from registration of two or more persons who use the trademark independently or propose to use it independently. The registration shall be made as of the date of the application and the applicant shall be issued a certificate of registration. However the registrar is empowered U/S 23 (4) to amend the register or certificate of registration for the purpose of correcting a clerical error or an obvious mistake. The applicant must complete all formalities within one-year time period or within such time as may be given in the notice. If defaulted, the application may be treated as abandoned after the registrar gives notice in this regard to the applicant.

Section 25 provides that Registration shall be for a period of ten years but may be renewed from time to time in accordance with the provisions of this act. Renewal can be made before the expiration of the registration. In case of default in renewal before expiration, the act provides for the grace period of six months from the date of expiration for renewal on payment of prescribed fee. However, before expiration of the last registration of a trademark, the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and conditions as to the renewal.  If the proprietor does not file for renewal, the name of the mark will be removed from the register. However, the Registrar is entitled to restore the mark in register if it is just to do so after six month but before one year from the expiration of the last registration, on the receipt of application and on payment of the fee by the proprietor. Such restoration shall be for another ten years to period.

REGISTRABILITY OF THE MARK AS TRADEMARK:

Any mark, which is not hit by the definition and section 9, qualifies for registration. However, a mark qualified under section 9 has to meet the positive objections under section 11 to be finally registered. Section 11 is the qualification of section 9. Mark having crossed the threshold under section 9 is capable of getting the protection of the Trademark Act subject to section 11. It deals with prohibition on registration but does not hit the inherent capability of mark as to its registrability. The marks prohibited under section 11 may not be desirable based upon public policy considerations.

Under The Trademark Act, 1999, trademark is defined as to mean, inter alia, a mark, which can be represented graphically and is capable of distinguishing the goods or services of one person from those of others.

In a way, the definition itself prescribes two features to be present in any mark to be a trademark:

Capability of being represented graphically;

Capability to distinguish the goods or services of one person from those of others.

Absolute Grounds for Refusal of Registration under Section 9

Whereas Section 9 of The Act lays down the ground for on the basis of which, the registration of the mark can be denied absolutely. One of the grounds is ‘if the mark is devoid of distinctive character’[12]. The phrase ‘distinctive character’ implies the ‘incapability of the mark to distinguish’ the goods or services of one person from that of the others. It also implies that the mark in itself should be distinctive in certain cases. For example, common word of dictionary or the name of the place can not be registered unless it is shown that the common word or the name has become distinctive of his goods or services in the mind of the purchasing public, but if he succeeds, then he will be entitled to protect his mark by registration.[13]

Another ground[14] for refusal to register the mark is that the mark should not indicate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of services or other characteristics of the goods or services. In addition to these, a mark stands disqualified from registration if represents the shape of goods results from the nature of the goods themselves or shape of the goods necessary to obtain a technical result or shape which gives substantial value to the goods.[15]

Yet another ground[16] is that the mark must not be consisted of the marks or indications, which have become customary in current language or in the bona fide and established practices of the trade it is not desirable to monopolize such marks.

These are the grounds, which are specific to the mark that means, if the mark is affected by any of these characteristics, it cannot be registered. But this is not the end. The mark not affected by any such disqualification, has to pass what can be called as the effect test. That means, the mark should not deceive the public or cause confusion or hurt the religious susceptibilities of any class or section of the citizens or be scandalous or obscene.[17] The section 9 lays down the pre-requisites of qualification for the protection of trademark law.

Capability to Distinguish Section 9(1)(a)

In National Bell Co. v Metal Goods MFG. Co[18]., Supreme Court of India observed that distinctive in relation to the goods or services as meaning ‘adapted to distinguish’ goods with which the proprietor is/ may be connected. Whereas in Davis v Sussex Rubber Co. Ltd.[19], the Court of Appeal drew the distinction between capable of distinguishing and adapted to distinguish by saying that ‘capable of distinguishing’ seems to have a somewhat wider import than the expression ‘adapted to distinguish’ as it embraces marks which have not at the date of the application, but which, if used long enough, may become distinctive of the goods of the proprietor of the mark. The court in this case, observed that ‘capable of distinguishing’ might perhaps refer to the future, in the sense that a word may be able to distinguish although at the moment of time at which the application is made it may not have become fully effective to distinguish. However, the Court of Appeal observed that the general considerations, which have to be taken into account in construing the expression ‘capable of distinguishing’, are the same as in construing ‘adapted to distinguish’. [20]

In determining the capability to distinguish, the authority must take into consideration both inherent capability and factual capability to distinguish. Inherent capability may mean that irrespective of the peculiarities of the trade or the practice of other traders, the mark is shown to possess the capability of distinguishing the goods to which it is applied. For example, a mark having direct reference to the character or quality of the goods is considered as inherently not capable of distinguishing. However Indian Trademark Registry takes the view that if the reference to the character or quality is only indirect or suggestive, the mark can be considered. The ‘factual capability to distinguish’ depends upon the facts and circumstances of each case. In each particular case, it become a subject of inquiry whether the mark by virtue of its being use or any other circumstances, it is in fact is capable of distinguishing the goods. The Supreme Court in National Bell case observed that in determining the distinctiveness, regard must be had whether it is inherently distinctive or is inherently capable of distinguishing and by reason of its use or any other circumstances, it is in fact adapted to distinguish or is capable to distinguishing the goods.

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[1] K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and company, Nagpur) 2003 at 239

[2] Section 18 (4)

[3] Section 18 (5)

[4] Relevant Case: Tikam Chand and Another v Dy. Registrar of Trade Marks 1998 PTC 542 (Del).

[5] Section 20

[6] Relevant case: Virendra Sethi v Kundan Das 20002 (25) PTC 50 (Del)

[7] Ashoka Dresses v Bonn’s Shirts & Another (2000) RPC 507

[8] P. N. Mayor v Registrar of Trademarks AIR 1960 Cal. 80

[9] K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and company, Nagpur) 2003 at 261.

[10] Case relating to adducing evidence: Hemla Embroidery v Hindustan Embroidery FAO No. 21 of 1968; Hastimal Jain trading as Oswal Industries v Registrar of Trade Marks 2000 PTC 24; Jagajit Industries Ltd. v The Registrar of Trade Marks 2001 PTC 24; Kantilal Thulasidas Jobanputra v Registrar (1982) PTC 127; Torrent Pharmaceuticals Ltd. v Union of India (1998) (2) Arb. LR 45

[11] K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and company, Nagpur) 2003 at 272

[12] Section 9(1)(a)

[13] K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and company, Nagpur) 2003 at 91

[14] Section 9(1)(b)

[15] Section 9(3)

[16] Section 9(1)(c)

[17] Section 9(2)

[18] (1970) 3 SCC 665

[19] (1927) 44 RPC 412; (1927) 2 Ch 345

[20] English Cases: Electrix Ld’s., Appl. (1958) RPC 176; Philips’ Phonographische Industrie’s Appl. (1955) 72 RPC 183; Chaseside Engineering Co. Ld.’s Appl. (1956) RPC 73; Verve’s Records Inc.’s Appl. (1958) RPC 3; Tastee Freez International Ld.’s Appl. (1960) RPC 255

*Please note that the above note extracted from Indian law Institute publications