Duties of Registrar to Register the Trademark
Trademarks Act – Notes on Clauses : This clause makes it mandatory on the Registrar to register the trademark where the procedure for registration of a trademark has been completed. The application has been accepted and either the application has not been opposed or the opposition has been dismissed. The reference to Part A and Part B has been omitted, which is consequential. In other respects, this clause corresponds to section 23 of the existing Act.
Trademarks (Amendment) Act, 2013
By section 4 of Trademarks (Amendment) Act, 2010, section 23 of the principal Act has been amended.
This section makes provision for registration of a trademark, when an application for registration of a trademark has been accepted and either-
- The trademark application has not been opposed and the time taken for notice of opposition has expired; or
- The trademark application has been opposed and the opposition has been fixed and decided in favor of the applicant;
The Registrar shall, unless the Central Government otherwise directs, register the mark. It is thus mandatory for the Registrar to register the mark, unless the Registrar takes proceedings for the withdrawal of acceptance of an application for registration of trademark, as provided in section 19, read with rule 38 of the 2017 Rules.
Time limit for effecting registration
Before the enactment of Trademarks (Amendment) Act, 2010, there was no time limit for effecting registration of a trademark, when conditions in clauses (a) and (b) of sub-section (1) are fulfilled and also when there is no direction to the contrary from the Central Government to the Registrar in respect of the registration of the trademark. India has deposited the Instrument of Accession to the Madrid Protocol for International registration of trademarks, effective from 8th July, 2013.By the above Amendment Act, special provisions relating to protection of trademarks through International Registration under the Madrid Protocol have been made under Chapter 4A, comprising sections 36 A to 36 G. As provided in the Madrid Protocol, India has opted to adopt a time limit of 18 months for refusal of protection or to grant protection to International registration where India is designated. The amendment in section 23 prescribing a time limit of 18 months is intended to bring the provision in harmony with the newly inserted sub-section (5) of section 36 E.
Unless the Central Government otherwise directs
The phrase “unless the Central Government otherwise directs” occurring in the corresponding provision of the previous Act, was omitted in the 1993 Bill, as passed by the previous Lok Sabha. Though there is no substantive or significant change in the present enactment, as compared to the 1993 Bill, section 23 in the present Act, however, continues to retain the said phrase from the 1958 Act. The precise scope and nature of this power conferred on the Central Government in the context of this enactment is not clear, particularly having regard to the fact that unlike under the 1958 Act, under the present Act, the Central Government has been divested of any role or jurisdiction in matters concerning registration of trademark.
The significant changes brought about by the current law are:
- Section 6 enacts that the Register of Trademarks is to be kept under the control and management of the Registrar. The phrase “Subject to the superintendence and direction of the Central Government” which occurred in the corresponding section 6 of the 1958 Act has been omitted.
- In chapter 6 concerning registration of registered users, the Central Government has not been given any role or function and the Registrar has exclusive jurisdiction.
- In chapter 9 which deals with certification trademarks, the final authority for registration is vested on the Registrar, removing the jurisdiction of the Central Government, which existed under the corresponding provisions of 1958 Act.
- Section 104 of the old Act, which contained provisions for “Procedure before Central Government” as regards filing of evidence in proceedings before Central Government, has been omitted, since the present Act does not vest Central Government with any quasi-judicial function .
- The provision in section 109 of the 1958 Act which contained in express terms that no appeal shall lie from any decision, order or direction made or issued under the Act by the Central Government or from any act or order of the Registrar for the purpose of giving effect to such decision, order or direction, has been omitted in the present Trademarks Act, 1999. This is consequent to the omission of provisions in the law for issuing directions to the Registrar by the Central Government. The newly enacted chapter 4A, incorporating special provisions relating to protection of trademarks through international registration under the Madrid Protocol does not envisage any administrative intervention in granting or refusing protection to international registration under the Protocol. It is obvious that the procedure governing domestic registration should not be more arduous as compared to granting protection to international registrations. From the above, it will be evident that the role of the Central Government is limited and does not extend to issuing any direction to the Registrar in the day to day administration or enforcement of the Trademarks Act 1999. The role of Central Government is limited to issue of notifications and doing other acts, as contemplated in the following provisions. Section 1 regarding the commencement of the Act and Section 3 regarding appointment of the Registrar of Trademarks. Section 5 regarding establishment of Trademarks registry. Section 79 prescription of classes of textile goods under Chapter 10. Section 82 determination of character of textile goods by sampling. Section 83 regarding establishment of an Appellate Board known as the Intellectual Property Appellate Board. Section 90 regarding determination of the name and categories of Officers or Employees for the Board. Section 121 regarding notification of permissible limits of variation as regards number, quantity etc., Section 139 regarding notification requiring goods to show indication of origin. Section 148 regarding notification as regards documents open to public inspection. Section 150 regarding levying of fees and surcharge in respect of various matters. Section 154 corresponds to declaration of countries not according to citizens of India, same rights as it accords to its own nationals. Section 156 regards power of Government to remove difficulties and Section 157 regarding power of Central Government to make Rules under the Act.
All the above provisions giving powers to Central Government to issue notification or to make rules in certain respects are general administrative powers delegated to the Central Government to facilitate the administration of the Act, in accordance with the general scheme of legislation. Under section 23 of the old Act, the directions of Central government for refusal of registrations were mostly in respect of common names of chemical elements or chemical compounds or generic names, being International non-property names or words and emblems which would fall within the ambit of the Emblems and names (Prevention of Improper Use) Act, 1950. Specific provision has been made in the current act with under sections 9 and 13 enabling the Registrar himself to notify the INNs declared by WHO and refuse the application in terms of those provisions. It may be recalled that under Section 23 of the Act of 1958, the Central Government had issued directions to the Registrar not to register trademarks in respect of certain categories of drugs including single ingredient drugs, pursuant to the policy obtaining at that time requiring such drugs to be marketed only under generic names. This power was derived from section 23 from the phrase “unless the Central Government otherwise directs”. In present Trademarks Act, 1999, explicit provision has been made under section 9(3) explanation which provides that “the nature of goods or services in relation to which the trademark is used or proposed to be used shall not be a ground for refusal of registration”. This provision gives effect to the requirement prescribed in the TRIPS agreement as well as the Paris Convention.
It would appear that in the present scheme of law, there is no place or scope for the Central Government to “otherwise direct”, in exercise of the powers under section 23 as regards registration of a trademark, where the Registrar has been vested with full authority subject only to appeal to an Appellate Board. It is therefore submitted that the phrase “unless the Central Government otherwise directs”. Which did not find a place in the 1993 bill, occurring in section 23 of the current enactment is redundant and out of place. In any event, it is to be hoped that this so-called power incorporated in section 23 will not be invoked by the Central Government, over-ridding or bypassing the procedure prescribed for registration or cancellation of registration.
Under section 23, when an application for registration has been accepted and the same has not been opposed within the prescribed time or the application was opposed but the opposition was dismissed by the Registrar, the Registrar is bound to register the trademark, subject only to compliance of the official requirements of the Registrar in respect of payment of fees or filing of representations of the mark, etc., Where registration is effected by oversight or any other reason during the penalty of an opposition, such registration will be regarded as one wrongly remaining on the register and will be rectified. Registrar rectifying registration and directing the opposition proceedings to continue was confirmed by the IPAB. When registration proceeding is stayed by the High Court or the Appellate Board, the decision is binding on the Registrar. In a contempt proceedings for violation of stay order, the Deputy Registrar and Assistant Registrar tendered unqualified apology, pleading ignorance. Both the officials were reprimanded by the High Court.
Date of registration
When a mark is registered, it will be registered as of the date of making of the application. It was, held that since the date of application, the infringement action commended by the proprietor was in order even though the formal registration was affected after the commencement of the proceedings by the plaintiff. The date of registration is however subject to the provisions of section 154, which make special provision relating to applications from citizens of Convention countries claiming priority rights. In such cases, the date of registration will be the date on which the earliest application was made in a Convention Country. It is to be noted that for purposes of section 47(1)(b), the 5 year period of non-use is reckoned “from the date on which the trademark is actually entered in the register”. The expression “registered trademark” means a trademark which is actually on the register and remaining in force.
Issue of registration certificate
Sub-section (2) provides that on the registration of a trademark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration of the mark, sealed with the seal of the Trademarks Registry. Depending upon the mark and its size, either the mark is affixed or printed on the certificate itself or annexed to the certificate of registration. In accordance with the practice of the Registry, the certificate contains a remark that it is not for use in legal proceedings or for obtaining registration abroad. For this purpose, the registered proprietor must obtain a legal certificate on the application made on Form TM 46, on payment of prescribed fees. Since the registration certificate does not contain details regarding conditions and limitations governing the registration, renewal of the trademark, change of ownership, etc., the rules do not permit the registration certificate itself to be used in legal proceedings. The certificate merely serves as an official record of registration of the mark.
It has been held that “The Registrar is within his rights to issue the certificate any time after the orders have been passed, there is nothing wrong in the action of the Registrar in issuing the certificate of registration without writing for the period of filing of appeal to elapse. When registration of a trademark is affected during the pendency of an appeal, such registration is subject to result of the appeal. If the appellant succeeds, the registration of the mark under appeal would stand automatically cancelled on the principle that whatever is dine during the pendency of litigation before any court of law, the validity of such action would depend upon the result of the litigation.
In case the registered proprietor desires, he may file a request on Form TM-M for issue of a duplicate or for further copy of the certificate of registration on payment of the prescribed fees. This provision is to prevent any fraudulent practice on the part of a registered proprietor for procuring a registration certificate by way of a duplicate after the expiry of the period of registration and time limit for renewal or restoration of lapsed registration.
Non-completion of registration within 12 months – Notice under Rule 52
Sub-section (3) which corresponds in identical terms to the provisions contained in sub-section (3) of section 23 of the 1958 Act provides that if registration is not completed within 12 months from the date of application by cause of default on the part of the applicant, the Registrar may, after providing notice to the appellant, consider the application as abandoned. In principal terms, the registration is never completed in 12 months. Therefore the question of abandonment of the application generally arises only in the event of default on the part of the applicant to comply with official requirements. Under Section 132 where an applicant is in default in the prosecution of an application filed under this act or any act relating to trademarks in force prior to the commencement of this Act, the Registrar may, by notice require the applicant to remedy the default within the time specified and after giving him, if so desired, an opportunity of being heard, consider the application as abandoned, unless the default is remedied or alternative within the time mentioned in the notice.
In such cases, under Rule 52, the Registrar will issue a notice (on form RG-1) calling upon the applicant to remedy any deficiency or default and giving him 21 days notice before which the applicant should comply with the official requirements or otherwise the application would be liable to be treated as abandoned. Such notices will be sent to the applicant’s designated address or to the applicant’s agent, with a copy thereof to the applicant. If the applicant requires more time, it is open to him to seek an extension of time by filing a request on Form TM-M together with the prescribed fees. Rule 52 provides for a 21 days notice from the date of such notice with the possible extension of time not exceeding one month as the Registrar may allow on request made on Form TM-M. Failure to comply with either the official requirements or respond to the opposition notice 1, without seeking an extension of time on Form TM-56 will result in the abandonment of the application. In such cases, only a fresh application will have to be filed for registration of mark. It is immaterial that the failure to complete registration was not on account of the applicants default, but because of the neglect of the agent. Rule 14 makes provision for service of documents at or to the Trademarks Registry. Section 27 of the General clauses Act, 1897 defines the “manner of service by post. The words ‘serve’, ‘give’ and ‘send’ are used as interchangeable words. The word ‘issued’ is also used in the same sense as ‘served’. But the statute may make a distinction between ‘issue’ and ‘service’ and in that case issue of notice may not embrace service.
When a notice is required to be ‘served on or sent by registered post to’ a person within a particular time, the notice, if it is to be served by post, must be posted at such a time that in the ordinary course of post, it will reach the person before expiration of the particular time. The act of giving a notice is not complete on mere dispatch of the notice. But the requirements that the District magistrate shall send by registered post, not less than seven clear days before the date of the meeting, a notice of such meeting’ has been construed to mean that seven clear days should intervene between the date of dispatch and the date of meeting and not between the date of service and the date of meeting. When the addresses refuses to accept a letter sent to him by registered post, there is due service and he is imputed with the knowledge of the contents of the letter by the combined effect of the presumptions arising under section 27 of the General Clauses Act and section 114 of the Evidence Act. When a Rent control Act provided that no amount of rent shall be deemed to be in arrears ‘unless the landlord on the rent becoming due serves a notice in writing through post office under a registered cover on the tenant to pay or deposit the arrears within the period of fifteen days from the date of receipt of such notice’, the Supreme Court held that the notice must be taken to be duly served even when the postman returned it with the endorsement ‘left without address, returned to sender’. It was pointed out that all that a landlord can do to comply with the statutory provision is to post a prepaid registered letter containing the tenant’s address and that a postman is neither required to make enquiries regarding the where about of the addresses nor is he required to detain the letter until the addresses returns and accepts the letter. In this back ‘serves’ was interpreted to mean ‘sends by post’ and the word ‘receipt ‘ as the tender of the letter by the postal peon at the address mentioned in the letter. The postal endorsement of refusal by the addressee that the notice was not served on him by the postman may not in every case enough to rebut the presumption. A document sent by registered post cannot be taken to have been served if the registered cover is returned to the sender with the endorsement ‘not found’. Presumption of service under Section 114 of the Evidence Act was not available for registered letters only, but also for letters dispatched under the ordinary post. Generalized denial would not be enough to demolish the presumption of service raised under section 114. The expression ‘notice’ or ‘give notice’ does not necessarily mean notice in writing and an oral intimation may be sufficient.
Review of Registrar’s Decision
If the applicant is serious in prosecuting his application and with no intention to abandon it, as an alternative to filing of a fresh application, it is open to him to file an application on Form TM-M for review of the Registrar’s decision abandoning the application, setting out the grounds in detail in a statement to be annexed to the request. The application for review has to be filed within a period of one month from the date of the decision or within such period not exceeding one month thereafter as the Registrar may, upon request, allow.
Dealt of applicant before mark is registered
In case of death of any applicant for registration of a trademark after an application is filed and before the mark is registered, on proof of applicant’s death and on proof of the transmission of the interest of the deceased person, the Registrar may substitute in the application his successor in interest in place of the name of such deceased applicant. The application will proceed thereafter as per law.
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