A Mark Registered by an Agent Without Authority

In one line

Where an agent registers his principal's mark in his own name, the proprietor may oppose it, cancel it or have it transferred to himself, provided he acts within three years of learning what the agent did.

Why the section exists

It is the commonest way a foreign proprietor loses a mark in India. He appoints a distributor or an agent, who registers the mark locally in his own name, and then either uses it against the proprietor or sells it back to him.

The relationship is one of trust. The agent knows the mark because the proprietor told him about it. Registering it in his own name is a breach of that trust, and the Act treats it as such rather than as an ordinary priority contest.

And the provision comes from the Paris Convention. Article 6septies requires it, and section 146 is India's implementation.

The Convention provision

Paris Convention Article 6septies, headed "Marks: Registration in the Name of the Agent or Representative of the Proprietor Without the Latter's Authorization".

(1) "If the AGENT OR REPRESENTATIVE of the person who is the PROPRIETOR OF A MARK IN ONE OF THE COUNTRIES OF THE UNION applies, WITHOUT SUCH PROPRIETOR'S AUTHORIZATION, for the REGISTRATION OF THE MARK IN HIS OWN NAME, in one or more countries of the Union, the proprietor SHALL BE ENTITLED TO OPPOSE THE REGISTRATION applied for or DEMAND ITS CANCELLATION or, IF THE LAW OF THE COUNTRY SO ALLOWS, THE ASSIGNMENT IN HIS FAVOR of the said registration, UNLESS SUCH AGENT OR REPRESENTATIVE JUSTIFIES HIS ACTION."

(2) "The proprietor of the mark shall, subject to the provisions of paragraph (1) above, be entitled to OPPOSE THE USE of his mark by his agent or representative IF HE HAS NOT AUTHORIZED SUCH USE."

(3) "DOMESTIC LEGISLATION MAY PROVIDE AN EQUITABLE TIME LIMIT within which the proprietor of a mark must exercise the rights provided for in this Article."

The Indian section

Section 146: "If an AGENT OR A REPRESENTATIVE of the proprietor of a registered trade mark, WITHOUT AUTHORITY USES OR ATTEMPTS TO REGISTER OR REGISTERS THE MARK IN HIS OWN NAME, the proprietor SHALL BE ENTITLED TO:

• OPPOSE the registration applied for, or
• SECURE ITS CANCELLATION, or
• RECTIFICATION OF THE REGISTER SO AS TO BRING HIM AS THE REGISTERED PROPRIETOR of the said mark BY ASSIGNMENT IN HIS FAVOUR:

PROVIDED THAT SUCH ACTION SHALL BE TAKEN WITHIN THREE YEARS OF THE REGISTERED PROPRIETOR OF THE TRADE MARK BECOMING AWARE OF THE CONDUCT OF THE AGENT OR REPRESENTATIVE."

Broken down

"An agent or a representative." The section does not define either word. It covers a distributor, a selling agent, a licensee, a local representative and anyone else standing in that relation. What matters is the relationship of trust, not the label.