Registration procedure, honest concurrent use and rectification

1. The procedure

1. Application (section 18). Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply in writing to the Registrar. A single application may cover several classes of the Nice Classification (section 18(2)). Applications are filed at the office within whose territorial limits the applicant’s principal place of business in India is situated.
2. Examination. The Registrar examines the application for absolute and relative grounds and issues an examination report. The applicant replies, and may be heard. The Registrar may refuse, accept, or accept subject to amendments, conditions or limitations (section 18(4)).
3. Advertisement (section 20). An accepted application is advertised in the Trade Marks Journal, now published online. Exceptionally, it may be advertised before acceptance.
4. Opposition (section 21). Any person may oppose within the period allowed after advertisement (three months, extendable by one month). The applicant files a counter-statement, failing which the application is treated as abandoned. Both sides file evidence and are heard.
5. Registration (section 23). If there is no opposition or it is rejected, the mark is registered as of the date of the application, and a certificate is issued.
6. Term and renewal (section 25). Ten years, renewable for ten years at a time, indefinitely.

2. Opposition: who may oppose, and on what grounds

Who. Section 21(1) allows any person to give notice of opposition. The opponent need not own an earlier mark or show a commercial interest, because opposition protects the public as well as rival traders. Only the proprietor of an earlier mark, however, may oppose on the reputation-based grounds in section 11(2) (s.11(5)).

Procedure. Notice of opposition (Form TM-O) within three months of advertisement, extendable by one month; a counter-statement by the applicant within two months, failing which the application is treated as abandoned (s.21(2)); evidence in support by the opponent, evidence in reply by the applicant, and evidence in rejoinder; a hearing; and a reasoned decision (s.21(4)), appealable to the High Court (s.91).

Grounds. The Act does not list grounds of opposition separately; any ground on which registration could be refused may be raised. They fall into five groups:

1. Absolute grounds (s.9): lack of distinctive character, descriptiveness, customary or generic marks (s.9(1)); deceptive marks, marks hurting religious susceptibilities, scandalous or obscene matter, marks prohibited by the Emblems and Names (Prevention of Improper Use) Act, 1950 (s.9(2)); and shapes resulting from the nature of the goods, necessary for a technical result, or giving substantial value (s.9(3)).
2. Relative grounds (s.11): identity or similarity with an earlier mark for identical or similar goods with likelihood of confusion (s.11(1)); identity or similarity with a well-known mark or a mark with a reputation, even for dissimilar goods (s.11(2)); and use liable to be prevented by the law of passing off or by copyright (s.11(3)).
3. Lack of proprietorship or bad faith (s.18(1)): the applicant is not the proprietor, has copied a foreign or prior mark, or has no bona fide intention to use.
4. Prohibited words: chemical element names and International Non-proprietary Names (s.13); use of the names or representations of living persons or persons recently dead without consent (s.14).
5. Prior use by the opponent, which supports both the passing-off ground and the objection that the applicant cannot claim to be the proprietor.

The burden is on the applicant to establish the right to registration; the opponent must prove the facts of its prior rights or reputation. The Registrar decides on the evidence and may accept the application subject to limitations instead of refusing it.

3. Effect of registration

• Exclusive right to use the mark for the registered goods or services and to obtain relief for infringement (section 28(1)).
• Prima facie evidence of validity (section 31).
• Protection against a distinctiveness challenge: a mark registered in breach of section 9(1) is not to be declared invalid if, after registration and before the challenge, it has acquired distinctive character through use (section 32).
• No action for infringement of an unregistered mark, though passing off is preserved (section 27).
• Limits: the rights of a prior user (section 34), and where two persons hold registrations for identical or similar marks, neither has an exclusive right against the other (section 28(3)).

4. Honest concurrent use (section 12)

Section 12 provides that in the case of honest concurrent use, or of other special circumstances which in the opinion of the Registrar make it proper to do so, he may permit the registration by more than one proprietor of identical or similar marks for the same or similar goods or services, subject to such conditions and limitations as he thinks fit. It is an exception to section 11(1).

The Pirie factors

The factors applied in India come from Alex Pirie & Sons Ltd.’s Application (House of Lords, 1933):

1. the extent of use, in time, quantity and area of trade;
2. the degree of confusion likely to follow from the resemblance of the marks, which is a measure of the public inconvenience;
3. the honesty of the concurrent use;
4. whether any instances of actual confusion have been proved;
5. the relative inconvenience that would be caused if the mark were registered, subject to conditions and limitations if necessary.

Honesty is the central condition. Use begun with knowledge of the other mark and an intention to benefit from it is not honest, however long it has continued. Use begun in ignorance and continued openly may be honest even after the user learns of the other mark.

The Indian cases

• Amritdhara Pharmacy v. Satya Deo Gupta, 1962 INSC 170, AIR 1963 SC 449. The Court held that “Lakshmandhara” was deceptively similar to “Amritdhara” for medicinal preparations. But the appellant had known of the respondent’s use for many years and had not objected. On the ground of acquiescence and special circumstances under section 10(2) of the 1940 Act (the predecessor of section 12), registration was allowed, limited to sales in the State of Uttar Pradesh.
• London Rubber Co. v. Durex Products, 1963 INSC 50, AIR 1963 SC 1882. The Court considered honest concurrent use under the 1940 Act and applied the Pirie factors, treating honest adoption and the extent of use as matters of fact on which the applicant bears the onus.

5. Losing the registration: removal for non-use (section 47)

A registered mark may be taken off the register, in respect of any of the goods or services, on application by a person aggrieved, if:

• (a) it was registered without any bona fide intention to use it, and there has been no bona fide use up to three months before the application; or
• (b) up to three months before the application, a continuous period of five years from the date of entry on the register has elapsed without bona fide use.

Use must be genuine trade use, not token use to keep the mark alive. Special circumstances in the trade, such as an import ban, may excuse non-use (section 47(3)).

6. Rectification (section 57)

Any person aggrieved may apply for cancellation or variation of a registration on the ground of any contravention of, or failure to observe, a condition entered on the register, or because an entry was made without sufficient cause, wrongly remains, or is wrong. The forum, after the Tribunals Reforms Act, 2021, is the High Court or the Registrar. Appeals from the Registrar go to the High Court under section 91.

In Vishnudas Trading v. Vazir Sultan Tobacco, 1996 INSC 719, the respondent had registered “Charminar” for the whole class of manufactured tobacco but traded only in cigarettes. The Court held that the registration could be rectified to confine it to the goods actually traded in, so that the appellant could register a similar mark for chewing tobacco. A proprietor cannot hold a monopoly over a class merely by registering for it.

Section 124 and the infringement suit

When the defendant in an infringement suit pleads that the plaintiff’s registration is invalid, section 124 requires the court to stay the suit, if rectification proceedings are pending, or to frame an issue and allow the defendant to apply for rectification within three months if it finds the plea prima facie tenable. In Patel Field Marshal Agencies v. P.M. Diesels, 2017 INSC 1157, the Court held that the question of validity is for the rectification forum alone, and that if the defendant does not apply for rectification within the time allowed, the plea of invalidity is deemed abandoned and cannot be raised later in the suit.

How this is examined

For the short note on concurrent use, give section 12, the Pirie factors, Amritdhara, and the effect under section 28(3). A full essay on registration should go through sections 18 to 25, the effects of registration, and the ways registration is lost (sections 47 and 57), with Vishnudas and Patel Field Marshal.