Question:- Application for registration of Trade Mark is subject to opposition to registration. Even after registration is not perpetual, it is subject to renewal, removal and restoration. Discuss.
Answer:- The protection of trademarks originated as a police measure to prevent the grievous deceit of the people by the sale of defective goods, and to safeguard the collective good will. A trade mark includes any word, name , symbol, configuration, device , shape of goods, packaging , combination of colours or any combination thereof which one adopts and uses to identify and distinguish his goods from those of others. The trade mark law primarily serves two important purposes: (i) it protects the public from confusion and deception by identifying the source or origin of particular products as distinguished from other similar products; and (ii) it protects the trade mark owner’s trade and business as well as the goodwill which is attached to his trade mark. In Cadbury India Limited and Others v. Neeraj Food Products, the Delhi High Court observed that the spirit , intendment and purpose of the trade mark legislation is to protect the trader and consumer against dishonest adoption of one’s trade mark by another with the intention of capitalizing on the attached reputation and good will.
Section 2 (1)(m) defines mark to include ‘a device, brand, heading , label, ticket , name, signature, word, letter, numeral , shape of goods, packaging or combination of colours or any combination thereof. The definition of mark is an inclusive definition.
A trade mark is required to be capable of distinguishing the goods or services of one person from those of others. To be distinctive or capable of distinguishing the goods, there may be some inherent qualities or distinguishing characteristics in the mark itself which make it so distinctive or capable of distinguishing the goods of the one person from others. The concept of trade dress which includes overall “look and feel” of the trade mark is inherently built into the definition of trade mark under the Trade Marks Act.
Application for registration of Trade Mark is subject to opposition to registration. Even after registration is not perpetual, it is subject to renewal, removal and restoration. Chapter III, comprising Sections 18 to 26 , Trade Marks Act, 1999 provides for procedure of registration of trade mark.
Section 11 of the Act provides that A trade mark shall not be registered if its use in India is liable to be prevented (i) by virtue of any law, in particular, the law of passing-off protecting an unregistered trade mark in the course of trade, or (ii) by virtue of law of copyright.
According to Section 18 of the Act, for registration of a trade mark, an application is to be made to the Registrar. A single application in the prescribed form can be made for registration of a trade mark for different classes of goods and services by paying prescribed fee for each such class of goods and services. Prescribed fee must be deposited within the prescribed time.
Upon the receipt of application , the Registrar’s office undertakes what is described as ex-officio examination of the application. It causes a search to be made amongst the registered trade marks and the pending applications to ascertain whether there are on record, in respect of the same or similar goods/services or description of goods/services, any marks identical with or confusingly similar or which may show an association with the mark sought to be registered.
The Registrar may refuse the application; or accept it absolutely; oraccept it subject to such amendment , modification, conditions or limitations, if any, as he may think fit.
In case of refusal or conditional acceptance of application, the Registrar has to record in writing the grounds for such refusal or conditional acceptance of the application. The Registrar is also to record in writing about the material used by him in arriving at this decision of his.
Section 19 of the Act provides for withdrawal of acceptance of an application, before its registration, when the acceptance is in error or subject to some conditions or limitations, but after hearing the applicant. In order to afford the public an opportunity to oppose the registration of the mark, Section 20 provides for advertisement of application, either after acceptance or before acceptance.
According to Section 21 of the Act, any person can give notice in writing of opposition to the registration within four months from the date of advertisement or re-advertisement of an application for registration. 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.
If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition. 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 do desire.
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. 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. The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter-statement or such terms as he thinks just.
In Raymond Ltd. v. Chanakya Beverages, (2002) 24 PTC 52 (Bom) It was held that after receipt of notice of registration, the applicant has to send counter-statement within the prescribed time, otherwise , he shall be deemed to have abandoned his application. More so, in such cases, principles of natural justice have to be observed.
Section 22 provides for correction of any error in or in connection with the application or amendment of the application either before or after acceptance of the application. The Registrar may amend or correct any error in the application for registration before as well as after the acceptance of the application for registration. Such corrections or amendments of the application may be made on such terms as the Registrar may think fit.
Section 23 of the Act makes it mandatory on the Registrar to register the trade mark , where the procedure for registration of a trade mark has been completed, i.e.-
- Application has been accepted.
- Application has not bee approved.
- Opposition, if any, has been dismissed.
On registration, the Registrar shall issue a certificate of registration in this regard.
The function of a trade mark is to distinguish the goods of one trader from those of others. The more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them. Thus worlds which are descriptive of goods are not considered prima facie distinctive. A “common word” having reference to the character or quality of goods in connection with which it is used, and having no reference to anything else, cannot be an apt or appropriate instrument for distinguishing the goods of the trader from those of another.
The reference to the character or quality should be direct and plain and not remote and far-fetched. Direct reference corresponds in effect to aptness for normal description. One has to see whether the word can be used to signify or call up in the minds of those who read it a quality or character of the goods. The question should be decided by common understanding of the term among people who use it and not by dictionary meaning.
In Mohd. Faiq v. Modi Sugar Mills Ltd. (AIR 1972 Del 46), the word ‘Sun’ for lanterns was held not to be a laudatory term having direct reference to the character or quality of goods, though the rays of ‘sun’ dispel darkness and lanterns too are used for dispelling darkness. The court observed that reference to character or quality should be direct and plain and not remote and far-fetched. Likewise, the word which is sought to be construed as laudatory, should have obvious signification of praise, and not one out of which an inference of praise has to spelt out by a labored process. Sun is the source of light and heat to the earth. The element of praise is neither self-evident in the word ‘sun’ nor can the said word be descriptive or character or quality of goods
Where registration of a trade mark is not competed within twelve months from the date of the application, the Registrar may treat the application as abandoned.
According to Section 28 of the Act, the registration of a trade mark provides exclusive right to the registered proprietor of the trade mark to use the trade mark in relation to the goods or services in respect of which the trade mark is registered. It also makes the registered proprietor entitled to obtain relief in respect of infringement of the trade mark. The exclusive right to use of a trade mark shall be subject to any conditions and limitations to which the registration is subject to.
In N.R. Dongre and Others v. Whirlpool Corporation and Another AIR 1995 Delhi 300 , the Delhi High Court observed that According to section 28 (1) of the Act, registration of a trade mark gives to the registered proprietor thereof exclusive right to use the same in relation to the goods in respect of which it has been registered. But from the opening words of section 28 (1) namely, “subject to the provisions” it is cleared that right conferred on a trader is not an indefeasible right as the same is expressly made subject to other provisions of the Act. This is further made clear by section 27 (2) of the Act, which provides that “nothing in this Act shall be deemed to affect the right of action against any person for passing off the goods as goods of another person ore remedies in respect thereof .” Thus it is manifest that section 28 of the Act and all other provisions come with in the overriding way of section 27(2) of the Act. Similarly section 33 of the Act also saves vested rights of a prior user. It lays down that nothing in the Act shall entitle a registered proprietor of a trade mark to interfere with the use of the trade mark by a prior user of the same. Thus the right created by section 28 (1) of the Act in favour of a registered proprietor of a trade mark is not an absolute right and is subservient to other provisions of the Act namely sections 27 (2) , 33 etc.
In Mohd. Iqbal v. Mohd. Wasim (AIR 2002 M.P. 162), the trade marks in dispute were relating to ‘bidis’. Both the labels contained a fountain or “Phawara” as the main feature. The designs surrounding the fountain are also similar. Both the labels are almost of equal size and under both the ‘bidis’ are sold under caption “Phawara Chap” bidis. The court held that the similarities as above appear to be deceptive.
In Rudi Roller Flour Mill (P) Ltd. v. Kewal Krishna Kumar [2002(25) PTC 555 (Del)], the Delhi High Court held that between the two competing marks used in respect of the same goods (i.e. flour, maida,etc.)- ‘SHAKTI BHOG’ and ‘SHIV SHAKTI’ along with a device of trishul and damru, there is no striking similarity or affinity of sound between them.
Section 24 of the Act enacts for registration of jointly owned marks where the mark is used or proposed to be used in relation to goods or services connected with all the joint applicants.
Section 25 of the Act provides that the registration of a trade mark shall be for a period of ten years, but may be renewed from time to time. The Registrar may after payment of prescribe fee may renew the registration. On the expiration of registration, if renewal is not sought within the time prescribed therefor, the Registrar may remove the trade mark from the register. 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, it 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
Section 26 of the Act provides that if a trade mark has been removed from the register for failure to pay the renewal fee, 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 (Registrar or Appellate Board, as the case may be) is satisfied either- (i) that there has been no bonafide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or (ii) 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.
In Whirlpool Corporation v. Registrar of Trade Marks (1998) 8 SCC 1 at p. 15, the Supreme Court stated that once a trade mark has been removed from the Register for failure to pay the fee for renewal, it would , nevertheless, be deemed to be a trade mark already on the Register for a period of one year for purposes of any application for registration of another trade mark, unless the “Tribunal” is satisfied either:
- that there has been no bona fide trade use of the trade mark which has been removed during the years immediately preceding its removal; or
- 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.
Section 57 provides for the powers of the tribunal (Appellate Board or Registrar) to cancel or vary registration and to rectify the register. On application made by the aggrieved person to the Appellate Board or the Registrar, the tribunal, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. Any person aggrieved by the absence or omission form the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by an error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar. The tribunal may make such order for making, expunging or varying the entry as it may think fit.