Use of trademarks and registered users – trademark consultants in cbe
Use of trademarks and registered users:
Proposed use of trademarks by company to be formed, etc. – No application for the registration of a trademark in respect of any goods or services shall be refused not shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trademark if the registrar is satisfied that-
- A company is about to be formed and registered under the companies act, 1956 (1 of 1956) and that the applicant intends to assign the trademark to that company with a view to the use thereof in relation to those goods or services by the company, or
- The proprietor intends it to be used by a person, as a registered user after the registration of the trademark.
The provisions of section 47 shall have effect, in relation to a trademark registered under the powers conferred by this subsection, as if for the reference, in clause (a) of sub-section (1) of that section, to the intention on the part of an applicant for registration that a trademark should be used by him and it has been substituted as a reference to the intention on this part that should be used by a company or a registered user concerned.
As per sub-section (1), the tribunal may require the applicant to provide the security for the costs of any proceedings which relates to any opposition or appeal and in default of such security being duly given, may treat the application as abandoned.
In a case to which sub-section (1) applies, a trademark with respect to any goods or services been registered in the name of an application who relies on intention in order to assign the trademark to a company then within a period as may be prescribed or within a period not exceeds six months as the registrar may on application being made to him in the prescribed manner, allows the company be registered as the proprietor of the trademark with respect to goods or services, the registration may cease to have effect with respect thereof at the expiration of that period and the registrar may amend the register accordingly.
This section contains two exceptions providing for registration of a trademark
(1) By a person who proposes to assign the trademark to a company to be formed and registered under the companies act, 1956 and
(2) By a person who proposes to use the trademark by a registered user as and when the trademark is registered.
Section 46 of the act is an exception to section 18 of the act so far as the limitation of the expression by him is concerned in section 18(1) of the act.
Removal from register and imposition of limitations on ground of non-use:
A registered trademark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the registrar of the appellate board by any person aggrieved on the ground either-
- The trademark was registered without any bona fide intention on the part of an applicant of registration which it should be used in relation to those goods or services by him or in the case to which the provisions of section 46 may apply by the company concerned or the registered user as the case may be and in fact there is no bona fide user of the trademark in relation to those goods or services by any proprietor thereof for the time being up to a date of 3 months before the date of application, a continuous period of 5 years from the date on which the trademark have been actually entered in the register or longer had elapsed during which there was no bona fide use thereof in relation to those services or goods by any proprietor thereof for the time being:
Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trademark in respect of the goods or services in question, or where the tribunal is of opinion that he might properly be permitted so to register such a trademark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trademark by any proprietor thereof for the time being in relation to use of the trademark by any proprietor thereof for the time being in relation to
- Goods or services of the same description; or
- Goods or services associated with those goods or services of that description being goods or services, as the case may be, in respect of which the trademark is registered.
Where in relation to any goods or services in respect of which a trademark is registered-
- The circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trademark in relation to goods to be sold, or otherwise traded in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; or in relation to services for use or available for acceptance in a particular place in India or for use in a particular market outside India; and
- A person has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of those goods, under a registration extending to use in relation to goods to be sold, or otherwise traded in or in relation to goods to be so exported, or in relation to services for use or available for acceptance in that place or for use or available for acceptance in that place or for use in that country or the tribunal is of opinion that he might properly be permitted so to register such a trademark.
- On application by that person in the prescribed manner to the appellate board or to the register, the tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing the registration shall cease to extend to such case.
- The applicant would not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purpose of sub-section (2) on non-usage of a trademark which has been shown to have been due to special circumstances in a trade which may include the restriction on the use of trademark in India that has been imposed by any regulation or law and not to any intention to abandon or not to use the trademark in relation to goods or services to which the application relates.
To know more -> Click here.