The words you are searching are inside this book. To get more targeted content, please make full-text search by clicking here.
Discover the best professional documents and content resources in AnyFlip Document Base.
Search
Published by Enhelion, 2020-07-20 08:52:21

Module 5

Module 5

MODULE 5
CONTESTED PROCEEDINGS

5.1 OPPOSITION TO A TRADEMARK

Opposition to a trademark registration can be filed as per section 21(1) of the Trade
Marks Act, 1999 (the Act). It states that “any person” may give a notice of opposition
to the registration of a trade mark before the Registrar. An individual filing the
opposition is not required to have any related business or personal interest in the matter.
The person need not be a prior registered trade mark owner. There is no concept of
bona fide under opposition.

5.1.1 Grounds for opposition

The various grounds for opposing a trademark are almost the same as those for refusal
as no specific grounds are mentioned under the Act. The various grounds on which
opposition can be filed are as follows:
● absolute grounds as mentioned under section 9;
● relative grounds under section 11;
● prohibitions contained in Section 13;
● absence of consent in writing in Section 14;

The opponent should file an opposition within three months from the date of
advertisement or re-advertisement of an application for registration or within such time,
not exceeding one month in the aggregate, as the Registrar allows after receiving the
application for opposition.1 To file an opposition against any advertised mark, the
prescribed fee is Rs. 2500/- as mentioned in the First Schedule, entry 12 of the Trade
Marks Rules 2017, along with Form TM-5.2

1 Section 21(1), Trade Marks Act 1999.
2 Controller General of Patents, Designs and Trademarks, Office of the Registrar of Trade Marks,
available at <http://www.ipindia.nic.in/form-and-fees-tm.htm>

5.1.2 Counter statement

A counter statement should be filed within two months from the date of receipt of the
copy of the notice of opposition. The applicant shall file a counter statement in Form
TM-6 before the appropriate office with a fee of Rs. 1000/-. The counter statement shall
be verified in the same manner as the notice of opposition.

Section 21 (2) of the Trademarks Act 1999, states that if no counter statement is filed
within two months, then it will be deemed that the applicant has abandoned his
application and accordingly an order will be issued.

5.1.3 Evidences

Section 129 states that evidence needs to be given in the form of an affidavit. It will be
at the discretion of the Registrar to allow oral evidence in lieu of or in addition to
evidence by affidavit.

Rule 120 of the Trade Marks Rules 2017 states the essentials of the affidavit. It should
be –

● Duly stamped.
● Headed in the matter or matters to which they relate;
● Drawn up in the first person;
● Divided into paragraphs consecutively numbered; and each paragraph shall, as far

as practicable, be confined to one subject.
● State the description and the true place of abode of the person making the same;
● Bear the name and address of the person filing it;
● State on whose behalf it is filed.

The hearing is performed on the date fixed to represent the cases by the opponent as
well as the applicant after completion of the formality check and submission of
evidence. On that particular date of hearing, both the parties put forward their
arguments before the Registrar. In case any party desires to file written arguments, the
Registrar shall allow the same to be taken on record. After conclusion of the hearing,

the Registrar shall give his decision in writing3. The decision of the Registrar shall be
communicated to the parties as per the procedure and practice of the Trademarks
Registry.

3 Rule 50 of the Trade Marks Rules, 2017.





5.2 RECTIFICATION

Any person can make a request under section 47 and file before the Registrar or the
IPAB for rectification of the register by removing the mark for non-use. An application
can also be filed under section 57 or 58 for rectification and correction of the register
respectively. The various sections of the Act dealing with rectification are as follows:

● Section 47 states that a trade mark which is not used within five years of its
registration becomes liable for removal either completely or in respect of those
goods or services for which the mark has not been in use and any person may make
an application for removal of a registered trademark on this ground. The period of
five years under section 47(1) will commence from the date on which the trade mark
is actually entered in the register. It is different from the date of application for
registration of the trademark being the date of registration in view of Section 23(1)
of the Act.

● Section 57 states that an application for canceling or varying the registration of a
trade mark may be made on the ground of any contravention or failure to observe
the conditions entered on the register or by absence or omission from 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 any error or defect in any entry in
the register.

● Section 68 states that a “person aggrieved” may make an application for removing
the registration of a collective trade mark. The registration of a collective mark may
also be removed from the register on the ground that the manner in which the
collective mark has been used by the proprietor or authorized user has caused it to
become liable to mislead the public as a collective mark; or that the proprietor has
failed to observe, or to secure the observance of the regulations governing the use
of the mark.

● Section 77 states that a “person aggrieved” may make an application for
cancellation or for varying the registration of a certification trade mark. On the
application of any aggrieved person and after giving the registered proprietor an
opportunity of opposing the application, an order for expunging or varying any
entry in the register to a certification trade mark, or for varying the regulations may
be passed, on any of the following grounds namely:

(i) that the proprietor is no longer competent, in the case of any of the goods or
services in respect of which the mark is registered, to certify those goods or
services;
(ii) that the proprietor has failed to observe any provisions of the regulations to be
observed on his part;
(iii) that it is no longer to the public advantage that the mark should remain
registered;
(iv) that it is requisite for the public advantage that if the mark remains registered,
the regulations should be varied.

Rule 97 of the Trade Marks Rules 2017, talks about filing an application for
rectification of registrar. The application can be made in Form TM-O for making,
expunging or varying of any entry relating to a trademark or a collective trademark or
certification mark in the register. In case there are registered users of the mark, such
application shall be accompanied by as many copies of the form as there are registered
users.





5.2.1 Counter statement

A counter statement can be filed in Form TM-6 stating the grounds on which the
application for rectification is contested and if he does so, the tribunal section of the
Trade Marks Registry shall serve a copy of the counterstatement on the person making
the application within one month of the receipt of the same. The provisions which
applied to opposition shall be applicable to rectification also i.e. Rules 42 to 51 of the
Trademarks Rules, 2017.

5.2.2 Hearing

In relation to fixing and conducting hearing, adjournment of hearing and the disposal
of application for rectification, the procedure as mentioned earlier in opposition
proceedings shall be followed. On the date fixed for hearing, the Registrar shall hear
the arguments of the parties present. The decision passed by the Registrar is
communicated to both the parties and is recorded and updated in the module TMAS.

5.3 APPEALS

Section 83 of the Trademark Act, 1999 provides for the establishment of the Intellectual
Property Appellate Board (IPAB). It was constituted on 15 September 2003. It was
established to hear and resolve appeals against the decision of the Registrar.
According to section 91(3) of the Act-
● An appeal to the IPAB must be in the prescribed form.
● It must be verified in the prescribed manner.
● It shall be accompanied by a copy of the order appealed against and the requisite

fees.
The prescribed form shall bear in mind the following-
● The application should be in writing.

● The physical requirements of the paper that should be used- typed or printed on
both sides on thick green or white paper.

● Triplicate copies along with the form.

The appeal has to be made within three months from the decision or order of the
Registrar, although extension could be granted by the IPAB on showing sufficient
cause for the delay.

5.3.1 Process of filing an appeal before the IPAB:

● The appeal has to be filed in Form 2 as prescribed under the IPAB Rules, 2003,
within thirty days from the date of the decision of the Registrar of trademarks.

● The Deputy Registrar shall endorse on every application or appeal the date on which
it is presented.

● If, on scrutiny, the application or appeal is in order, it shall be duly registered and
given a serial number.

● If an application or appeal is found to be defective and the defect noticed is formal
in nature, the Deputy Registrar may allow the applicant or appellant to rectify the
same in his presence.

● If the said defect is not formal in nature, the Registrar on his discretion may notify
the applicant or appellant and allow him fifteen days time from the date of receipt
of the communication from the Registrar to rectify the defect.

5.3.2 Fees

The fees prescribed by the Trade Marks Rules, 2017 are:-

Sl. No. Form No. Description Fee (In INR)

1 Form-1 Application under section 47, 57 or 125 for 5000
removal of a trademark from the register or
rectification of the register

2 Form-2 Appeal from an order or decision of the 5000
Registrar of Trade Marks in respect of goods
or services falling in one class

3 Form-3 Appeal from an order or decision of the 10000
Registrar of Trade Marks in respect of goods
or services falling in two or more class

4 Form- 4 Petition for condoning delay in filing appeal 2500 (for delay
per month or part
thereof)


Click to View FlipBook Version
Previous Book
Module 1
Next Book
Module 6