Application process for Registration

process

  • 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 process of registration of his trademark.
  • An individual application may be made for trademark registration for different classes of goods and services and fee payable therefore shall be in respect of each other such class of goods and services.
  • Every application under Sub-section (1) shall 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 the joint applicants the principal places 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. The process 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 Trademarks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situate.
  • 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, as he may thinks fit.
  • 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 in arriving at his decision.

Withdrawal of Acceptance

Where, after the acceptance of an Trademark application for process of registration of a trademark but before its registration, the Registrar is satisfied-

  • that the application has been accepted in error; or
  • that in the circumstances of the case the trademark should not be registered or must be registered with respect to conditions or limitations or other certain cases which the process of  application has been accepted.

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

process

  • When an application for trademark registration has been accepted whether absolutely or reference to conditions or limitations, the Registrar shall, suddenly it 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. The process provided that the Registrar may cause the application to be advertised before acceptance if its relates to a trademark process 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.
  • Where an application has been advertised before acceptance under sub-section (1); or the application process 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 cause 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

  • Any person may, within four months from the date of the advertisement or re-advertisement of an application for Trademark 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 Trademark registration while the registration process.
  • The Registrar shall serve a copy of the notice on the applicant for trademark registration and, within the specified time period of two months from the receipt given by the applicant of such copy of the notice of opposition, the applicant shall may transmit the notice 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.
  • If the applicant sends such detailed explanation or counter-statement, the Registrar shall produce a copy thereof on the person giving notice of opposition.
  • An evidence or the supporting elements produced by 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 opportunity to them to be heard, if they so desire according to the registration process.
  • The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions and limitations, if any, the registration process 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 the applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may need him to produce the production for the amounts of the proceedings before him, and in default of such protection being duly produced, may treat the opposition or application, as the case may be, as abandoned.
  • 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 according to the process.

Process of Correction and Amendment

process

The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for trademark registration process under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application. The process 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 dividend applications so dividend.

Process of Registration
  • Subject to the provisions of section 19, when an application for Trademark Registration has been accepted and either the application has not been opposed and the time for notice of opposition has expired; or the application has been opposed and the trademark opposition has been decided in favor of the applicant. The Registrar shall, unless the Central Government otherwise directs, register the said trademark [within eighteen months of the filing of the application] and the trademark when registered shall be registered as the date of the making of the said application and the date shall, subject to the provisions of section 154, be deemed to be the date of trademark registration.
  • On the registration of a trademark, the registrar shall issue to the applicant a certificate in the prescribed form of the trademark registration process thereof, sealed with the seal of the Trademarks Registry.
  • Where 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 produce the application as abandoned unless it is completed within the time specified in that behalf in the notice.
  • The Registrar may amend the register or a certificate of trademark registration for the purpose of correcting a clerical error or an obvious mistake.

Jointly owned trademarks

process

  • Save as provided in sub-section(2), nothing in this Act shall authorize the Registration of two or more persons who use a trademark independently, or propose so to use it, as joint proprietors thereof.
  • Where the relations between two or more persons interested in a trademark process are such that no one of them is entitled as between himself and the other or others of them to use it except- on behalf of both or all of them; or 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, and this Act shall have effect in relation to any rights to the use of the trademark vested in those persons as if those rights had been vested in a single person.

Duration, renewal, removal and restoration of registration

  • The Registration of a trademark, after the commencement of this Act, shall be for s period of ten years, but may be renewed from time to time in accordance with the provisions of this  
  • The Registrar shall, on the application 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 as may mentioned in the process , and renew the trademark registration for a period of ten years from the date of expiration of the original registration or of the last renewal process of registration, as the case may be (which date is in this section referred to as the expiration of the last registration as per the registration process).
  • At the prescribed time before the expiration of the last registration process of a trademark, 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 trademark 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 trademark from the register: The process provided that the Register shall not remove the trademark from the register if an applications 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 trademark and shall renew the registration of the trademark for a period of ten years under sub-section(2).
  • Where a trademark 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 process of trademark 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 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.

Effect of removal from the register for failure to pay fee for renewal

process

Where a trademark has been removed from the register for failure to pay the fee for renewal process , 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 a trademark already on the register, unless tribunal is satisfied either-

  • that there has been no bonafide trade use of the trademark which has been removed during the two years immediately preceding its removal; or
  • that no deception or confusion would be likely to arise from the use of the trademark which is the subject of the application process  for trademark registration by reason of any previous use of the trademark which has been removed.

For Trademark Registration in Coimbatore -> Click here.