Intellectual
Property Rights
Trade
Marks Act, 1999
CHAPTER III: PROCEDURE FOR AND DURATION
OF REGISTRATION
18. Application for registration
(1) Any
person claiming to be the proprietor of a trade mark used or purposed
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
trade mark.
(2) 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.
(3) Every
application under sub-section (1) shall be filed in the office of the
Trade Marks 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,
is situate:
PR0VIDED
that 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 Trade Marks Registry within whose territorial limits the place mentioned
in the address for service in India as disclosed in the application, is
situate.
(4) Subject
to the provisions of this Act, the Registrar may refuse the application
or may accept it absolutely or subject to such amendments, modifications,
conditions or limitations, if any, as he may think fit.
(5) 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.
19. Withdrawal of acceptance
Where,
after the acceptance of an application for registration of a trade mark
but before its registration, the Registrar is satisfied -
(a) that
the application has been accepted in error; or
(b) that
in the circumstances of the case the trade mark should not be registered.
or should be registered subject to conditions or limitations 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 if the application had not been accepted.
20. Advertisement of application
(1) When
an application for registration of a trade mark 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
together with the conditions or limitations, if any, subject to which
it has been accepted, to be advertised in the prescribed manner:
PROVIDED
that the Registrar may cause the application to be advertised before acceptance
if it relates to a trade mark to which sub-section (1) of section 9 and
sub-sections (1) and (2) of section 11 apply, or in any other case where
it appears to him that it is expedient by reason of any exceptional circumstances
so to do.
(2) Where
-
(a) an
application has been advertised before acceptance under sub-section (1)
; or
(b) after
advertisement of an application, -
(i) an
error in the application has been corrected; or
(ii) the
application has been permitted to be amended under section 22,
the Registrar
may in his discretion cause the application to be advertised again or
in any case falling under clause (b) may, instead of causing the application
to be advertised again, notify in the prescribed manner the correction
or amendment made in the application.
21. Opposition to registration
(1) Any
person may, within three months from the date of the advertisement or
re-advertisement of an application for registration or within such further
period, not exceeding one month in the aggregate, as the Registrar, on
application made to him in the prescribed manner and on payment of the
prescribed fee, allows, give notice in writing in the prescribed manner
to the Registrar, of opposition to the registration.
(2) The
Registrar shall serve a copy of the notice on the applicant for registration
and, within two 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 he
relies for his application, and if he does not do so he shall be deemed
to have abandoned his application.
(3) If
the applicant sends such counter-statement, the Registrar shall serve
a copy thereof on the person giving notice of opposition.
(4) 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.
(5) 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.
(6) 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 for
the costs of proceedings before him, and in default of such security being
duly given, may treat the opposition or application, as the case may be,
as abandoned.
(7) 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 just.
22. 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 under section 18, permit
the correction of any error in or 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 of the divided applications so divided.
23. Registration
(1) Subject
to the provisions of section 19, when an application for registration
of trade mark 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
trade mark and the trade mark 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.
(2) On
the registration of a trade mark, the Registrar shall issue to the applicant
a certificate in the prescribed form of the registration thereof, sealed
with the seal of the Trade Marks Registry.
(3) Where
registration of a trade mark 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 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.
(4) The
Registrar may amend the register or a certificate of registration for
the purpose of correcting a clerical error or an obvious mistake.
24. Jointly owned trade marks
(1) Save
as provided in sub-section (2), nothing in this Act shall authorise the
registration of two or more persons who use a trade mark independently,
or propose so to use it, as joint proprietors thereof.
(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
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 trade mark, and this 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.
25. Duration, renewal, removal and restoration of registration
(1) The
registration of a trade mark, after the commencement of this Act, shall
be for a period of ten years, but may be renewed from time to time in
accordance with the provisions of this section.
(2) The
Registrar shall,on application made by the registered proprietor of a
trade mark in the prescribed manner and within the prescribed period and
subject to payment of the prescribed fee, renew the registration of the
trade mark 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 (which date is in this section referred to as the expiration of
the last registration).
(3) At
the prescribed time before the expiration of the last registration of
a trade mark the Registrar shall send notice in the prescribed manner
to the registered proprietor of the date of expiration and the conditions
as to payment of fees and otherwise upon which a renewal of registration
may be obtained, and, if at the expiration of the time prescribed in that
behalf those conditions have not been duly complied with the Registrar
may remove the trade mark from the register:
PROVIDED
that the Registrar shall not remove the trade mark from the register if
an application is made in the prescribed form and the prescribed fee and
surcharge is paid within six months from the expiration of the last registration
of the trade mark and shall renew the registration of the trade mark for
a period of ten years under sub-section (2).
(4) Where
a trade mark has been removed from the register for non-payment of the
prescribed fee, the Registrar shall, after six months and within one year
from the expiration of the last registration of the trade mark, on receipt
of an application in the prescribed form and on payment of the prescribed
fee, if satisfied that it is just so to do, restore the trade mark to
the register and renew the registration of the trade mark 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.
26. Effect of removal from register for failure to pay fee for
renewal
Where a
trade mark has been removed from the register for failure to pay the fee
for renewal, it shall nevertheless, for the purpose of any application
for the registration of another trade mark during one year, next after
the date of the removal, be deemed to be a trade mark already on the register,
unless the tribunal is satisfied either-
(a) that
there has been no bona fide trade use of the trade mark 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
trade mark which is the subject of the application for registration by
reason of any previous use of the trade mark which has been removed.
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