When you have worked hard for something, you would do everything to protect it, wouldn’t you? Trade Mark registration is important for entities and individuals because it secures the business and prevent others from misusing something you have worked so hard on. Trade Mark consists of but is not limited to signs, symbols, words, phrases that differentiates one brand from another. The process of trade mark registration can be a long one but is a necessity that ensures protection to both the brands and the consumers. This article will deal with the process and procedure of trade mark registration.
PROCEDURE FOR AND DURATION OF REGISTRATION
Chapter 3, Sections 18 to 26 of the Trade Marks Act, 1999 deals with the procedure of trademark registration. Following is the detailed description of the same:
Application for registration
- Any person claiming to be the proprietor of a trade mark 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 of the registration of his trade mark.
- A single application may be filed for different classes of goods and services.
- Every application shall be filed in the trade Marks registry office within whose territorial jurisdiction the principal place of business is situate.
- The Registrar may refuse the application or may accept it, according to provisions of the Act, absolutely or with amendments, modifications limitations, if any, as he may think fit.
- In case of refusal or conditional acceptance, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the reason behind his decision.
Withdrawal of acceptance
Where, after the acceptance of the application but before the registration of the trade mark, 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 be registered subject to conditions or limitations,
the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application has not been accepted.
Advertisement of application
- When an application for registration has been accepted, absolutely or subject to conditions or limitations, the Registrar shall cause the application as accepted, to be advertised in the prescribed manner.
- An application has been advertised before acceptance under sub-section (1), or
- After the advertisement of the application-
- An error in the application has been corrected, or
- The application has been permitted to be amended under section 22,
the Registrar may cause the application to be advertised again or in any case falling under clause (b) may, notify in the prescribed manner, the correction or amendment made in the application.
Opposition of registration
- Any person may, within four (4) months from the date of advertisement or re-advertisement of an application, 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 Registrar shall serve a copy of the notice on the applicant for registration and, within two (2) months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner, a counter statement of the grounds on which his application relies.
- The Registrar shall than serve a copy on the person giving notice of the application.
- 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.
- The Registrar shall, after hearing the parties and considering the evidence, decide whether the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.
- Where a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice, neither resides nor carries on business in India, the Registrar may require him to give security of the costs of proceedings before him.
- The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter-statement on such terms as he thinks fit.
Correction and amendment
The Registrar may, at any time, whether before or after acceptance of an application for registration, permit the correction of any error in connection with the application or permit an amendment of the application:
Provided that if an amendment is made to a single application referred to in sub-section (2) of section 18 involving 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 the divided applications, so divided.
- When an application for registration has been accepted and either-
- The application has not been opposed and time for opposition has expired,
- The application has been opposed and has been decided in favour of the applicant,
the Registrar shall, unless the Central Government otherwise directs, register the said trade mark within eighteen (18) months of the filing of the application.
- On the registration of the trade mark, the Registrar shall issue to the applicant, a certificate in the prescribed form, sealed with the seal of the Trade Mark Registry.
- Where registration is not completed within twelve (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, treat the application as abandoned.
- The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.
Joint owned trade marks
- Nothing shall authorize the registration of two or more persons who use a trade mark independently, as joint proprietors except for sub-section (2).
- Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other, to use it except-
- On behalf of both of them, or
- In relation to an article or service with which both of them are connected in the course of trade,
those persons may be registered as joint proprietors of the trade mark, and the act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.
The registration process, though being a long and tedious one, ensures that the consumers do not face any problem in identifying the right brand, while making sure that the brands do not suffer from unauthorized use of their trade mark.