This article is written by Lavanya Gupta and covers Section 6 of the Trade Marks Act, which discusses the Register of Trade Marks and connected provisions on the subject, including the particulars to be recorded in a register as well as in electronic form, how to keep a trade mark active and file for amendments to the Register.

Introduction 

The Trade Marks Act (hereinafter referred to as the “Act”) was enacted in the year 1999, following the repeal of the Indian Trade and Merchandise Marks Act, 1958, the governing law on trade marks prior to the 1999 Act. It is consistent with international law and practices such as those provided under the Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994. It provides for the registration and protection of trade marks for various goods and services and the prevention of the use of false trade marks. It is a comprehensive law that regulates every aspect relating to trade marks, collective marks and certification trade marks. Section 6 of the Act which talks about the registration of trade marks is the focus of this article.

The register of trade marks is a record of registered trade marks under Section 6 of the Act. It is maintained at the head office of the Trade Marks Registry, which is discussed under Section 5 of the Act. The Registrar appointed under Section 3 of the Act is the official, responsible for maintaining the register. The central government is responsible for the appointment of a registrar to carry out the registration of trade marks, as well as specifying the head office and other branches of the Trade Marks Registry for this purpose.

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Particulars to be recorded in the register of trade marks 

As per Section 6(1) of the Act, the following particulars shall be recorded in the register:

  • Names, addresses and descriptions of the proprietors;
  • Notifications of assignments and transmissions;
  • Names, addresses and descriptions of registered users;
  • Conditions, limitations and any such matters relating to trade marks as may be prescribed for carrying out the objectives specified under the Act, which are the protection of trade marks and prevention of non-infringement.

Section 2 of the Act is the definition clause, which provides for a consistent interpretation of the aforementioned terms as well as other phrases used under the Act. For example, it defines a trade mark as a mark capable of graphical representation and of distinguishing the goods or services of one person from those of others. Further, it may include the shape of goods, their packaging and the combination of colours. The section also specified other conditions for defining a mark as a trade mark under the Act. It further explains the terms mentioned under Section 6 of the Act comprehensively:

  • Notify- notify in the Trade Mark Journal published by the Registrar;
  • Assignment- An assignment in writing by act of the concerned parties- it refers to the transfer of ownership of a trade mark from one party to another, thereby vesting control over the mark with the latter;
  • Transmission- Any mode of transfer not being an assignment, including by operation of law or devolution on the personal representatives of a deceased;
  • Registered user- A person registered under Section 49 of the Act;
  • Limitations- Any limitation of the exclusive right to use of a trade mark given by registration as a proprietor.

As per Rule 53 of the Trade Mark Rules, 2017, the entry shall specify the date of filing of the application, the date of registration, the goods or services and the class or classes in respect of which such registration is made and all particulars required by Section 6(1) of the Trade Marks Act. The Trade Mark Rules, 2017 further delineate the procedure and the particulars to be recorded for the entry of assignments under Rule 84, registered users under Rule 89 and other such matters related to the Act. Under Section 53 of the Rules, the following particulars must be specified in the entry for registration of the concerned trade mark in pursuance of Section 6(1) of the principal Act-

  • The address of the principal place of business in India of the proprietor/joint proprietors (as mentioned under Section 3 of the Rules);
  • In the absence of such a place of business, the proprietor’s address for service in India shall be the same as mentioned in the application and his address in the home country (or of the joint proprietors, in case of a jointly owned trade mark);
  • Particulars of the trade, business, profession, occupation or other description of the proprietor/joint proprietors as mentioned in the application;
  • Particulars affecting the scope of the registration or the rights conferred by it;
  • The convention application date, pursuant to an application under Section 154 of the Act which governs applications from citizens of convention countries;
  • The fact whether it is a collective or certification trade mark is to be recorded;
  • If it is recorded under the Section 11(4) of the Act, which allows for the registration of a similar or identical trade mark under special circumstances, that fact must also be recorded;
  • The office of the Trade Marks Registry where the trade mark was registered.

Storage of Register in electronic form  

As per Section 6(2) of the Act, it shall be open for the Registrar to keep the records completely or partly, in computer floppies, diskettes or any other electronic form, including e-filing, subject to the prescribed safeguards. Government regulations provide for the online filing of trade marks and digital signatures. The Trade Marks Rules also prescribe a procedure for an electronic mode of filing and registering trade marks. When such records are maintained on computers, Rule 53(3) of the Trade Marks Rules specifies that references in the Act to entries in the register shall be construed as reference to an entry as maintained in such electronic form. 

As per Section 53 of the Trade Marks Rules, 2017, the Registrar may, from time to time, consult computer experts to formulate guidelines for keeping official records in electronic form.

How to keep a trade mark active in the register 

An active and well-protected trade mark is essential for various reasons, ranging from safeguarding of intellectual property to prevention of deceptive trade marks from being registered to increasing consumer awareness regarding a particular brand. The following steps are essential in order to keep a trade mark alive in a register, thereby affording legal protection:

Register the trade mark

It is essential to register a trade mark in the register maintained under Section 6 of the Act in compliance with its provisions as well as those under the 2017 rules. All particulars that are prescribed must be provided with and the procedure for application and registration must be duly complied with. Registration of a trade mark carries many benefits,- it affords legal protection to the trade mark, safeguards the brand, makes it easier for consumers to identify with the brand and locate the product and further prevents trade mark infringement and unnecessary litigation.

Timely Renewal of trade mark 

Section 25 of the Act outlines the duration, removal, renewal and restoration of trade marks. The registration of a trade mark under the Act shall be valid for a period of 10 years but may be renewed from time to time as per the procedure outlined in the Act. The registered proprietor must file an application for renewal within the time and under the procedure provided for and must pay the prescribed fees. The Registrar may, on receipt of the application, renew the registration of the trade mark for a further period of ten years. The Section further provides for the removal of the trade mark from the register if the prescribed conditions are not duly complied with as well as delineates the conditions and procedure for its restoration thereon. 

As per Section 2 of the Act, a registered trade mark is one that is actually on the register and remains in force. This means for legal purposes, a trade mark shall remain registered and protected only when it is actually on the register, that is, timely renewal of a trade mark is as important as its registration in order to ensure continued legal safeguards for the trade mark and prevent rivals from encroaching on the brand.

How to file for an amendment to the trade mark register 

After the trade mark has been registered, the proprietor or user may want an alteration or amendment due to any change in market conditions, marketing tactics or any other situation in a fast changing business environment. A process for such amendment has been delineated in the Indian trade mark law regime. Section 102 of the Trade Marks Rules, 2017 deals with the alteration of trade marks as provided under Section 59 of the Principal Act. The registered proprietor may apply under Section 59 for the registrar’s permission to add or alter his registered trade mark. 

The applicant shall make an application in writing in Form TM-P as provided under the Rules and shall furnish a copy of the trade mark, as it will appear when so amended. Form TM-P is the application for post-registration changes in the trade mark. It is divided into three parts. Part ‘A’ provides for application details such as name, address, contact details of the applicant, details of the trade marks, the reason for amendments and so on. Part ‘B’ provides for the purpose of request and is divided into several sub-categories that can be filled in as per the applicant’s requirement. Part ‘C’ provides for details of the applicant and a list of accompanying documents. A copy of the application and the trade mark so amended shall be served on the registered users, if any, by the applicant.

Documents open to public inspection under Section 148

Section 148 of the Act lays down the documents that shall be open to public inspection at the Trade Marks Registry. This promotes an atmosphere of transparency and accountability in the business environment and prevents trade mark infringement or other unfair business practices. As per Section 148(1), the trade mark register as well as any documents upon which any entry in the register is based must be open for public inspection. It also lists other documents such as notices of opposition, affidavits or documents filed by the parties in proceedings before the Registrar, regulations governing the use of collective marks or certification trade marks (sections 63 and 74 of the Act, respectively), as well as applications for varying such regulations. Other documents open to public inspection include the indexes mentioned in Section 147, including the names of registered users, proprietors of registered trade marks, registered trade marks and trade marks for which publications for registration are pending, as well as other documents that the central government may notify.

This shall be subject to Section 49(4), which provides that the Registrar, on request of the applicant shall take steps to ensure the security of the information provided for the application under the Act, such that the same is not disclosed to rivals, which would defeat the purpose of the Act. When a register is maintained electronically, the inspection of such a register shall be made by inspecting the computer printout of the relevant entry. Any person may, on an application to the Registrar and the payment of prescribed fees, obtain a certified copy of any of the documents mentioned herein. 

Conclusion 

The registration of a trade mark is essential in order to prevent rival enterprises from deceptive usage of intellectual property. It is equally important for brand-building and for customers to associate with the brand name and mark, such that they remain aware and connected with its product. A trade mark for all practical purposes, is the symbol with which the public identifies a brand. If it is not protected, infringement may occur, which not only reduces the brand value of an entity but also confuses its customer base and reduces its esteem in the market, particularly if a rival entity deceptively uses the trade mark for illegal business practices.

Registration of the same not only prevents such infringement but further reduces the chances and costs of litigation in case a trade mark does get infringed. Public inspection of documents related to the registration of trade marks further ensures transparency in the entire process. E-filing has also made the whole process accessible and convenient for both businesses and customers and has reduced the time and cost for trade mark registration, infusing various aspects of the procedure from applications for registration to alteration of trade marks with more efficiency.

Providing such a regime of legal regulation and protection by vesting appropriate powers and duties in the Registrar shows commitment to international agreements and to eradicating unfair or deceptive practices, thereby providing a level-playing field for all businesses. When businesses through registration are able to secure their intellectual property at lesser cost and labour, particularly through the mode of e-filing, it ensures that all participants in the market indulge in fair competition, one that infuses trust and accountability. 

The growth of intellectual property assets is only certain with the establishment of a startup ecosystem that is constantly changing and innovating. While the importance and awareness of the trade mark regime have only grown, additional steps must be taken to strengthen the intellectual property law in India and to further the objective for which Section 6 of the Act has been formulated. While the procedure for registration and renewal of trade marks has indeed been streamlined, making the process accessible to smaller businesses, including MSME’s must be the objective of any further reforms undertaken in the trade mark regime.

Frequently Asked Questions (FAQs) 

Which authority shall exercise control over the register of Trade Marks?

As per Section 6(5) of the Trade Marks Act, the Registrar shall exercise control and management over the Register. Further, as per Section 6(6), every branch office of the Trade Marks Registry shall keep a copy of the register and of the documents mentioned under Section 148 as the central government may notify.

Who shall appoint the Registrar?

According to Section 3 of the Trade Marks Act, the central government may, by notification in the Official Gazette, appoint a person to be known as the Controller-General of Patents, Designs and trade marks, known as the Registrar for the purposes of the Trade marks Act, 1999.

References 

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