Who may apply Trademark for Registration in India?

Now a day, trademarks are essential to protect their own trade name and their product identity. This article deals with the procedure for making an application for trademark registration. At present separate applications are required to be made if the applications apply to register a trademark in more than one class. Sub-clause (2) has been amended to permit registration in several classes of goods or services by mean of a single application. However, the fee payable is to be calculated on the basis of the number of classes in which trademark registration is sought. In other respects, the clause corresponds to existing section 18 of the Trade and Merchandise Marks Act, 1958,

Who may apply?

Comments- Under section 18(1), 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 registration of the trademark. The law thus enables any person who is desirous of registering a trademark to apply for its trademark registration. The essential requirement is that he must have a claim to be the proprietor of the trademark. “Any person” would actually include an individual, startup or small enterprise, partnership firm, association of persons, a company, whether it is incorporated or not, a Trust, Central or State Government. A person who intends to assign the mark to a company to be formed and registered under the Companies Act, for the use by that company, may apply for trademark registration in terms of section 46 (1)(a). A person who intending to use the mark through a registered user under section 46 (1) (b) may also make an application.  An application may be made by a person, based on consent of the proprietor of an earlier mark under section 11(4).

Government

Section 153 defines that “the provisions of this Act shall be depending on the Government”. Government may, therefore, register trademarks under the Act, like any other person and is also subject to the provisions contained in the Act relating to infringement and passing off.

Body corporate or firm or partnership

In case of a body corporate or firm, the country of incorporation or the names and descriptions of all the partners composing the firm and the nature of registration, if any, as the case may be, are required to be stated in the trademark application form. Partnership Act clarifies “firm” as “persons who have entered into partnership with one another are called individually partners’ and collectively ‘a firm’, and the name under which their business is carried on is called the “firm name”. in his work on Law of Partnership in India, S.D. Singh and J.P. Gupta comment as follows: “ A ‘firm’ is not a legal entity but is only a collective or compendious name for all the partners. So if a suit to enforce a right arising from a contract is to be instituted by a firm against a third party, the firm would be the plaintiff. If the suit is to be instituted on behalf of a firm, the partner or partners, who wants to want to institute the suit on behalf of (i.e. for the benefit of) the firm would be the plaintiff. But in both the cases the suit would in effect be by or on behalf of all the partners of the firm. Goodwill of business, which includes trademark, forms part of the property of the partnership firm. In the absence of any express stipulation among partners, the trademark right of any of the partners is part of the partnership assets. If by arrangement, one partner takes the whole concern, there must be a valuation of the whole, including the name or style of the firm. But if the partners merely divide the other partnership assets, then each is at liberty to use the name just as they did before. An application for registration of trademark should thus be made in the name the firm constituted by of all partners, even though the partnership deed may provide that on dissolution the trademark may belong any one or more of the retiring partners. As such, subject to agreement between parties, the firm constituted by all the partners, may legitimately claim proprietorship to the mark under section 18. The claim of proprietorship in an application is by partnership as a whole and not by the individual partners. Accordingly, if there is an omission of the name of any partner or partners in TM-1, it will be perfectly in order to rectify the omission duly supported by necessary documents, as it will not mean that there is any change in the proprietorship of the trademark.

Trust

In case of a Trust, as per practice of the Registry, the application should be in the name of the Trust through its managing Trustee.

H.U.F

In case of an application made by Hindu Undivided family, the names of members of HUF, represented by its Karta, may be given, along with its trade name.

National treatment principle

The law does not make any discrimination on ground of nationality. Nor the making of an application is dependent on having an effective commercial establishment in India. The principle is in accord with the International Convention for Protection of Industrial Property (Paris convention), which seeks to guarantee not only that foreigners will be protected, but also that they will not be discriminated against in any way. The term “national” includes both natural persons and legal entities. The application of the national treatment rule extends also to nationals of non-member countries, provided they are domiciled or have an industrial or commercial establishment in the member country, as provided in Article 3 of the Convention. Having an industrial or commercial establishment means that there must be actual industrial or commercial activity. A mere letter box or the renting of a small office with no real activity is not sufficient. However, under Article 2(3) of the Convention, it is recognized that certain requirements of a mere procedural nature which impose special conditions on foreigners for purpose of judicial and administrative procedure, may also validly be invoked against foreigners who are nationals of member countries. An example is deposit of “security of costs” or designation of an “address for service” by every applicant in any proceeding under the Act or the rules and every person filing a notice of opposition, who does not have a principal place of business in India. The other exception Is what is provided in section 155 of the Act, according to which where any country or a country which is a member of a group of countries or a union of countries specified by the Central Government  in this behalf by notification in the Official Gazette, does not accord to citizens of India the same rights in respect of trademark registration and protection of trademarks as it accords to its own nationals, no national such country or Inter-Governmental organization shall be entitled either solely  or jointly with any other person to apply for registration of a trademark; or be registered as the assignee of the proprietor of a registered trademark; or apply for registration as a registered user under section 49.

Agent or representative of proprietor not to apply in his own name

Under section 18, the person who makes the application should have some proprietary right in the trademark. An agent or a representative of the proprietor cannot obviously claim proprietorship to the mark and accordingly cannot be an applicant for trademark registration in his own name. Section 146 explicitly enacts that if an agent or representative, without authority, uses or attempts to register, the mark in his own name, the proprietor shall be entitled to oppose the registration or secure its cancellation so as to bring him as the registered proprietor. Also under Article 6 (septies) of the Paris convention (1967), when an agent or representative of the person who is the proprietor of a mark. Applies without such proprietor’s authorization for the registration of the trademark in his own name in one or more countries of the Union, he cannot claim to be the proprietor of the mark. Registration, if any, obtained by such agent or representative, being unauthorized, will be subject to cancellation, unless such agent assigns the registration of the trademark to the proprietor. Where an agent or partner had registered wrongly in his own name the mark of the principal or of the partnership, the proper course for the agent or partner would be to assign the trademark to the proprietors. A trademark wrongly registered in one name cannot be changed to the right name by the court without the usual procedure of registration being gone through.

Exception under Section 46

Section 18(1) enacts that an application may be made by any person claiming to be the proprietor of a trademark “used or proposed to be used by him”. The exception to this requirement (viz. the mark being proposed to be used by the proprietor himself) is under section 46, which recognizes:

• The right of a person to apply for registration of a mark, where the applicant intends not to use the mark himself but to assign the mark to a company to be formed and registered under the Companies Act; and
• The right of the proprietor to use the registered mark through a license to be registered as a registered user.

Claiming to be the proprietor

A person may apply a right in a trademark either by its use in the course of trade in relation to certain goods or services or by trademark registration under the trademarks Act. He may also acquire the right in the trademark by assignment or by inheritance.  As between two parties who propose to use the particular trademark, who designs the mark first will get preference over the other. In a case of one party proposing to use the mark as against the actual user, the later will get precedence. As between two parties claiming actual user, the party whose use is prior in time will have the advantage over the other. In respect of a mark, which is not used and is only proposed to be used, “it is not easy to show how anyone can be or claim to be the proprietor of a trademark which no one has yet used. Presumably, all that is needed in such a case is that the applicant should claim in good faith to be entitled to be registered as the proprietor of the mark. The person who makes the application must assert a claim to be the proprietor of the trademark and should be able to substantiate the claim if challenged. A trademark is a mark ‘used or proposed to be used’ in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right to use the mark. It is, therefore, not necessary for the purpose of registering a trademark that those goods should be in existence at the date of the application for trademark registration. A person who intends to manufacture goods or has made preparations for the manufacture of goods but the manufacture has not commenced and, therefore, goods have not been marketed is nonetheless entitled to get the trademark which he proposes to use in relation to those goods registered. In the present day world of commerce and industry, a manufacturing industry can neither be commenced nor established overnight. There are innumerable preparatory steps required to be taken and formalities to be complied with before the manufacture of goods can start and the manufactured goods marketed. The process must be necessity take time.

Used or proposed to be used

The law permits registration of a mark, which has been or is being used or is proposed to be used. In the case of a mark proposed to be used, obviously the applicant is required to have a definite and present intention to use the mark as on the date of the application. Once an application for registration of a mark is made by a person who has apply to use a mark devised by him, all persons who happen to use that mark thereafter bona fide or not, will only be taking a risk and, therefore, their user cannot stand in the way of the applicant’s prosecuting his application for registration. Can a man properly register a trademark for goods in which he does not deal, or intend to deal – meaning by intending to deal, having at the time of registration some definite and present intention to deal in certain goods or description of goods and not a mere general intention of extending his business at some future time to anything which he may think desirable? This question we answer in the negative. The trademarks acts are not for copyright in marks; they are to protect trademarks. If you have no goods, you are claiming copyright only, you are not claiming for the purpose of protecting your trade. Proposed to be used means a real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but it means a resolved or settled purpose, which has been reached the time when the mark is to be registered. “Used” means used in this country. Desire to use the trademark is not sufficient. There must be a present intention or present proposal to use the trademark.

So as to indicate a connection in the course of trade name

The use of a trademark is in relation to goods or services. It is for the purpose of indicating or so as to apply a connection in the course of trade between the goods or services and some person having the right either as proprietor or by way of permitted user. The following case law would be useful in appreciating the phraseology. “A connection in the course of trade” in my opinion, means, in the definition section, an association with the goods in the course of their production and preparation for market. After the goods have reached the customer, they are no longer in the course of their production and preparation for market. After the goods have reached the consumer, they are no longer in the course of trade. Trading in them has reached its objective and its conclusion in the acquisition by the consumer. The limitation in the Act of 1938 in the course of trade sufficiently, in my opinion preserves the essential and characteristic function of the mark. The proprietor is required to be a trade who places the goods before the public as being his goods. That is a vital connection, not come later partial and ephemeral contribution to someone else”. “Connection in the course of trade” does not cover advertisement media like gifts of goods wholly different from the goods of the proprietor of the mark. It is possible for an importer to get a valuable reputation for himself and his wares by his care in selection or his precautions as to transit or storage, or because his local character is such that the article apply a value by his testimony as to its genuineness and if therefore goods, though of the same make, are passed off by competitors as being imported by him, he will have a right of action.

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