Here, we are going to discuss about the procedure which is to be followed by the registrar during trademark process. Upon receipt of an application for registration, the registrar’s office undertakes what is described as ex-officio examination of the application.
Ex-officio examination of application:
It causes a search to be made amongst the registered trademarks and the pending applications to ascertain whether there are on record, in respect of the same or similar goods or services or description of goods or services, any marks identical with or confusingly or which may show an association with the mark sought to be registered.
Since India joined the Paris convention in December 1998, the search for similar trademarks shall be extended to the well-known marks whether registered in India or not, for the well-known trademarks are to be protected even without their registration. The proprietors of earlier trademarks are mandated to oppose the registration of similar later trademark on their own.
Applicants or their representative are entitled to know the case against them and to be given an opportunity to respond to any material which may have influenced the examiner or hearing officer in forming a view on the registration application which is adverse to the applicant. The internal procedure of registry requires that any relevant results from a search conducted by any means, all the contents should be disclosed to the applicant or his lawyer. It is advisable to request for results of search reports, with or without results.
Procedure of the “Trademark examination”:
It must be a stringent and full examination in order to prevent trademarks being improperly registered. The court had already held that for achieving legal certainty and good administration. It is necessary to ensure that the trademarks which could successfully be challenged before the courts should not be registered; thus it is of practical importance that Indian registry does not register such marks whose use can be challenged before courts.
Examiner’s search for identical or similar mark:
The search for identical or similar mark is normally confined to the particular class in which registration is applied for. The classification of goods or services is not the criteria for deciding the question whether the two sets of goods or services are same, similar or dissimilar. The question has to be determined by taking into account several factors. Goods comprised in the same class mostly include goods and services of different descriptions and classes are not an index of similarity.
Acceptance and publication of the application:
Section 18(4) confers discretion on the registrar in relation to registration application. With the provisions, he may accept the application absolutely or with such modification, amendments, limitations or conditions as he may think fit. He is entitled to refuse the application, but only after recording in writing the grounds for refusal or for conditional acceptance and stating the materials used by him.
After acceptance the application is advertised in the form in which it has been accepted in the trademark journal. There are incidental powers vested in the registrar in section 19 and 20 to withdraw the acceptance or vary the acceptance or to advertise the application before acceptance, if proviso to section 20(1) applies. The advertisement, before the acceptance of the application, may be done in the cases falling in section 9(1) or section 11(1) and (2) or in other cases of exceptional circumstances.
Procedure of the Registrar to search register before advertisement for similar marks:
In a significant order, the person issued a blanket injunction which would ease the burden of owner of trademark in defending its mark from undesired onslaught, which it was facing in opposing hundreds of registration applications. The procedure of the registrar was directed to fulfil its duty of searching before advertising the mark in rule 37. The court also passed a blanket temporary order restraining registrar from processing pending applications or advertising any further application for trademark. The orders were passed in the light of recognition of having acquired a secondary meaning in various decisions.
However the case would go to merits to decide whether the particular trademark can be debarred even on dissimilar goods or services. Section 11 of the act would have to be scrutinized to find out respective rights of the parties.
Opposition to registration:
Within four months of advertisement or re-advertisement of acceptance of an application for registration, any person may give notice, in writing, of opposition to registration. The registrar is required to serve a copy of opposition notice to the applicant for registration.
Any person who can give notice and do the payment of fee as may be prescribed to the registrar for the opposition to the particular registration. From the date of advertisement or the re-advertisement of acceptance of application for registration must be within four months.
The applicant must submit his counter statement of the grounds on which the applicant relies within two month therefrom; otherwise it will be deemed that the registration application has been abandoned. The copy of the counter statement is required to be served on the opponents.
Amendment to opposition application without hearing:
The court/board held that though the registrar has wide powers to allow amendment of a notice of opposition, including introduction of a new ground in his discretion, he has to use his discretion judiciously following the well-established principles of natural justice.
An application for opposition to registration of trademark “sheesha altain” for tobacco used in hukka was filed by the applicants, who were owners of trademark “sheesha” for tobacco in 50 countries. The opposition application was later amended and the amendment was allowed by the registrar without giving the other party an opportunity to file a reply.
All the evidence is required to be submitted in the prescribed manner before the registrar. If the parties so desire, an opportunity of hearing is mandated to be given to them.
In proceedings before the registrar normally evidence is given by way of affidavits. But the registrar, if he thinks fit, may take oral evidence in lieu of or in addition to evidence by affidavit.
The manner in which affidavits are to be executed is in Rule116. Rule 109 is the one which empowers the registrar to require the filing of documents or to produce evidences that he may specified in the notice.
The registrar after hearing the parties and considering the evidence will decide whether registration is to be permitted or not. He also decided whether any conditions or limitations are to be attached to the permission. He should pass a speaking order stating all the reasons for imposing the conditions. The registrar is empowered to take into account any ground of objection is even if that has not been relied on by the opponents. Thus the procedure of the trademark examination process has been discussed.