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Chapter 3 – Procedure for and Duration of Registration

BananaIP Counsels > The Trade Marks Act > Chapter 3 – Procedure for and Duration of Registration

Chapter 3 – Procedure for and Duration of Registration

Application for Registration

18.—(1) 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 for the registration of his trade mark.
(2) A single application may be made for registration of a trade mark 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 situated:
Provided 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 situated.
(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.

Withdrawal of Acceptance

19. 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.

Advertisement of Application

20.—(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.

Opposition to Registration

21.—(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.

Correction and Amendment

22. 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 application so divided.

Registration

23.—(1) Subject to the provisions of section 19, when an application for registration of
a 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.

Jointly Owned Trade Marks

24.—(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.

Duration, Renewal, Removal and Restoration of Registration

25.—(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.

Effect of Removal from Register for Failure to Pay Fee for Renewal

26. 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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