Procedure For Registration Of A Trade Mark

1. Any person claiming to be the proprietor of the trademark is entitled to obtain registration by filing a request in the prescribed manner and by paying the requisite fee. The application is numbered as per seriatim and date. The application number and date of filing ultimately become the registration number and date of registration, if the application is able to overcome the objections as may be raised by the Registrar under Section 9 and/or Section 11 of The Trade Marks Act, 1999 and the opposition proceedings, if any, initiated by third party.

2. The said application, after filing, is examined by the Registrar on the basis of the data it possesses concerning the earlier registered marks or pending applications. The Registrar may accept the application to proceed for publication or direct the same to proceed for publication before acceptance. If the applications are in conflict with earlier registered or pending marks in respect of same or similar goods and the applicant claims concurrent or parallel rights on the ground of honest and bonafide adoption, the Registrar may waive objections and accept the application for registration irrespective of earlier conflicting marks.

On publication of the mark in the official gazette called the Trade Marks Journal, any person can oppose the grant of registration by filing a notice of opposition within the prescribed period of time of three months, which can be extended by a maximum period of one month on a specified request made before the expiry of the statutory period of three months. In the case Macleods Pharmaceuticals Ltd. V Tidal Laboratories P.Ltd & Anr¹, it was held that since the plaintiff failed to oppose the registration of the trade mark of the defendant and did not even file a suit for passing off for almost two years, the prayer of the plaintiff is rejected".

If an application is opposed, the rights of the applicants and opponents are determined in accordance with the provisions of the Act and/or the common law rights which the parties may claim. Such determination is made by the Registrar after following the due process of law, procedure and providing an opportunity of being heard to the respective parties.

In the caseThe British India corp. Ltd V Kharaiti Ram & Other ²,

Facts: The prayer for registration of the respondents was accepted for trademark 'DWM-DHARIWAL' by the registrar. Plaintiff was manufacturing goods under the trademark 'DHARIWAL' since 1920. On publication of the advertisement of the trade mark of the respondents, the plaintiff gave notice of its intention to oppose the registration of the trade mark advertised on the ground of it being violative of the Trade and Merchandise Marks Act 1958.

Held: Since both the devices have close resemblance, an overall impression is created that the goods manufactured and marketed by the respondents are the goods manufactured by the plaintiff. The order of the Assistant Registrar accepting the registration is illegal and without jurisdiction. Thus the appeal was allowed.

Registration of a mark can be opposed by any person on any of the grounds enumerated under Sections 9, 11 and 18 of the Act. The opposer can file, as a ground of opposition that the mark applied for registration is:

1. Not distinctive
2. Not capable of distinguishing
3. Descriptive
4. Has a direct reference to the character and quality of the goods.
5. Is a geographical term which in its ordinary significance has come to be known for a particular kind of quality of goods.
6. It comprises or contains scandalous or obscene matter or its use is prohibited under the Emblems and Names (Prevention and Improper Use) Act, 1950.
7. Its identity with the earlier trade mark and/ or similarity of the goods covered by the earlier mark.
8. The use thereof is likely to cause confusion and / or deception and is liable to be prevented under the laws of passing off or by virtue of law of copyright.
9. A person applying for registration is not the proprietor of the mark and the application has been filed in back date.

The decision of the Registrar made in the opposition proceedings can be challenged by the aggrieved person by filing an appeal before the Intellectual Property Appellate Board, which has been constituted for the first time under the provisions of The Trade Marks Act, 1999. Prior to the coming into force of the Trade Marks Act, 1999, the jurisdiction to entertain such appeals vested with the High Courts having jurisdiction over the respective offices of the Trade Mark Registry in Delhi, Chennai, Mumbai, Kolkata and Ahmedabad. The provision of second appeal against the order of Registrar that was available under The Trade & Merchandise Marks Act, 1958 has been repealed under the new Act of 1999.

The registration when granted is valid for a period of ten years from the date of registration (i.e. the date of application). It is imperative for a proprietor to seek renewal of registration before the expiry of the validity, failing which the mark becomes liable to be removed from the Register on account of non-renewal. The request for renewal of a trademark can be filed six months prior to the expiry of the validity of registration. The law also permits renewal and restoration of lapsed trademark provided such a request is made within the maximum period of one year after the expiry of the validity. If the registered proprietor of the trademark is not vigilant in renewing the registration either prior to the expiry or within one year after the expiry of validity, the mark shall stand removed from the register of trademark and would not qualify to be renewed. In such a scenario, the proprietor will have no other option but to file a fresh application for registration and to go through the same procedural requirements as if the said application was a fresh application for registration. Section 26 of the Act, however, protects the right of the registered proprietor for a period of one year after the date of removal against third party's claim to registration.

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