The proprietor of a registered trademark can protect its trademark through an infringement action while the proprietor of an unregistered trademark can always have resort to the common-law remedy in the event of deliberate counterfeiting. It, therefore, becomes the choice of a trademark holder to register it or not. However, there are certain advantages of registering a trademark over its non-registration:
(a) An infringement action does not warrant a burdensome job of proving of goodwill unlike that is required under an action of passing off; Infringement action can be brought only if the trademark is registered.
(b) Once the trademark is registered; there is a presumption, although not a guarantee, that the registration is valid; However, the presumption is valid until the registration of trademark is challenged by the other party.
(c) The procedure of registration attempts to define what the trademark is and in respect of which goods and service it is to be protected. For all these advantages, there is an incentive upon a trademark holder to register it.
The provisions related to the registration of a trademark are covered under chapter III, particularly under Section 18 of Section 26 of the Act. The current provisions relating to the registration of a trademark represents a move away from previous legislation in many aspects. It is no longer required to make separate applications if an applicant is desirous to register his trademark in more than one class. The duration of effect of registration has been increased from seven years to ten years which has helped in reducing the workload from the trademark office. Also, to facilitate the renewal of the trademark, grace period of six months from the expiration of a trademark has been provided. It is submitted that the new law, in broader sense, creates a simpler, clearer and better internationally co-ordinated framework for registration of a trademark.
Following are the procedure for seeking registration of trademark in India:
1. APPLICATION FOR REGISTRATION
(a) Proprietor of a trademark to make an application
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 his trademark. The term ‘any person’ for the purpose of this section include any company or association or body of individuals, whether incorporated or not.
(b) Single Application for Different Classes Of goods and Services
Under the previous legislation an applicant was required to make separate applications if he desired to register his trademark in two or more classes. However, under the current statute 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. This is one of the advantages of the present statute that it makes multiple applications easier by allowing one application to be made for more than one class.
(c) Place of Filings
Every application made by the proprietor of a trademark has to be filed in the office of the Trademarks 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 situates. However, 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 Trademarks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application situates.
2. ACCEPTANCE OR REFUSAL OF AN APPLICATION
Subject to the provisions of this Act, the registrar may refuse the application or may accept it absolutely or subject to such amendments, modification, conditions or limitations, if any, as he may think fit. This means, some discretion remains with the registrar in while deciding the application for registration. Section 18(5) of the Act further provides that 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.
3. CORRECTION AND AMENDMENT
The registrar may, on such terms as he thinks just, 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, where an amendment is made to a single application referred to in Section 18(2)which involves 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.
4. WITHDRAWAL OF ACCEPTANCE
Where the application for registration of trademark has been accepted by the registrar but before the trademark is registered, the registrar is satisfied-
1. That the said application has been accepted in error.
2. That is the circumstances of the case the trademark should not be registered or should be registered subject to conditions or limitations (if it was accepted absolutely) 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 the application had not been accepted.
5. ADVERTISEMENT OF AN APPLICATION
Once the application for registration of a trademark 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 along with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner. However, the registrar may, cause the application to be advertised before accepting it, if it relates to a trademark to which Section 9(1) or Section 11(1) or (2) apply, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do.
The purpose of such advertisement is to afford the public an opportunity to oppose the registration of the mark.
If the application has been advertised before acceptance under Section 20(1) or if after advertisement of an application, – (i) an error in the application has been corrected; or (ii) the application has been permitted to be amended, the registrar may in his discretion cause the application to be re-advertised or in the later situations may, instead of causing the application to be advertised again, notify in the prescribed manner the correction or amendment made in the application.
6. OPPOSITION TO REGISTRATION
Any person may, within four months from the date of the advertisement or re-advertisement or an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration.
The term ‘from the date advertisement’ should be understood as the date when the journal is issued and not the date borne on the journal.
The registrar shall then serve a copy of the notice of opposition on the applicant. Once the copy of a notice of opposition is received by the applicant, the applicant has to send to the registrar a counter-statement of the grounds on which he relies for his application within two months from the receipt of the notice of opposition, failing which he shall be deemed to have abandoned his application.
If the applicant sends such counter-statement, the registrar has to serve a copy on the person giving notice of opposition.
The registrar may, on request, permit correction or any error in, or any amendment of, a notice of opposition or a counter-statement on such terms as he thinks just.
(c) Evidence of the parties
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.
Whether an applicant or an opponent neither resides nor carries on business in India, the registrar may require such an opponent or the applicant to give security for the costs of proceedings before him. If such an applicant or opponent fails to give such security, the registrar may treat the opposition or application, as the case may be, as abandoned.
7. REGISTRATION OF A TRADEMARK
Subject to the provisions of Section 19, when an application for registration of a trademark 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 trademark. The trademark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of Section 154, be deemed to be the date of registration.
(b) Certificate of registration
On the registration of a trademark, the registrar shall issue to the applicant a certificate of the registration thereof, sealed with the seal of the Trademarks Registry. The registrar may amend the said certificate for the purpose correcting a clerical error or an obvious mistake.
If the registration of a trademark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the registrar may, after giving a 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.
8. JOINTLY OWNED TRADEMARK
The Act does not allow 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 trademark 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, those persons may be registered as joint proprietors of the trademark. In such cases, any rights to the use of the trade mark vested in those persons (joint proprietors) shall be deemed as if those rights had been vested in a single person) proprietor.
9. DURATION, RENEWAL, REMOVAL, AND RESTORATION OF REGISTRATION
The duration of registration of a trademark shall be of ten years. However, it can be renewed by the proprietor of a trademark from time to time. Under the Act of 1958, the duration of the registration of a trademark was seven years. This change in the duration has been done with a view to reduce the burden on the Trademark office and also to keep with generally accepted international practice.
Where an application is made by the registered proprietor of a trademark 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 trademark 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.
At the prescribed time before the last registration of trademark gets expired, the registrar has to send notice to the registered proprietor giving him knowledge of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained. If at the expiration of the time prescribed in that behalf those conditions have not been duly complied with by the registered proprietor, the Registrar may remove the trademark from the register. However, the Registrar shall not remove the trademark from the register if an application is made and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trademark and shall renew the registration of the trademark and shall renew the registration of the trademark for a period of ten years.
(d) Effect of removal from register
Where a trademark has been removed from the register as a result of non-payment of the fees for renewal, it shall nevertheless, for the purpose of any application for the registration of another trademark during one year, next after the date of the removal, be deemed to be trademark already on the register.
However, if the tribunal is satisfied either – (a) that there has been no bona fide trade use of the trademark 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 trademark which is the subject of the application for registration by reason of any previous use of the trademark which has been removed, the trademark so removed shall not be deemed to be a trademark on the register.
The Act incorporates a provision for removal of a trademark by the registrar where the trademark is not renewed by the proprietor. The trademark may be removed by the registrar in that behalf by virtue of Section 25(3) of the Act. However, if after six months and within one year from the expiration of the last registration of the trademark, the proprietor of a trademark makes an application and pays the prescribed fee, the registrar shall, if satisfied that it is just so to do, restore the trademark to the register and renew the registration of the trademark 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.