Registration and the Certificate
Chapter Thirty-Three
Syllabus topic 1.4, "Conditions and Procedure for Registration of Trademarks."
Pages 145 to 149 of 742
In one line
Once an accepted application has survived the opposition period, the Registrar must register the mark, and the registration is dated back to the day the application was filed.
In the wording a student can write in an exam: section 23(1) provides that, subject to section 19, where an application has been accepted and either has not been opposed and the time for notice of opposition has expired, or has been opposed and the opposition decided in the applicant's favour, the Registrar shall, unless the Central Government otherwise directs, register the trade mark within eighteen months of the filing of the application, and the mark when registered shall be registered as of the date of the making of the said application, that date being deemed, subject to section 154, to be the date of registration.
Section 23 broken down
Sub-section (1), the duty and the date. Three conditions: acceptance; no opposition with the time expired, or an opposition decided in the applicant's favour; and no direction of the Central Government otherwise. The Registrar shall then register. The words "within eighteen months of the filing of the application" were inserted by section 4 of the Trade Marks (Amendment) Act, 2010.
And the relation back. The mark, when registered, is registered as of the date of the making of the application, and that date is deemed to be the date of registration, subject to section 154, which substitutes the convention filing date where priority is claimed.
Why relation back matters. Everything measured from the date of registration runs from the application date: the ten years under section 25(1); the five years for acquiescence under section 33; the five year conclusiveness in section 32; and the calculation of the non use period under section 47.
Sub-section (2), the certificate. On registration the Registrar shall issue to the applicant a certificate in the prescribed form, sealed with the seal of the Trade Marks Registry. Section 5(4) provides that there shall be such a seal.
Sub-section (3), default by the applicant. Where registration is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in the notice.
Sub-section (4). The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.
The rules that carry it out
Rule 52, the section 23(3) notice. The notice shall be sent in Form RG-1 to the applicant at the address for service, and shall specify twenty one days from its date, or such further time not exceeding one month as the Registrar may allow on a request in Form TM-M, for completion of the registration.
Registration and the Certificate
Rule 53(1), entry in the register. Where no notice of opposition is filed within the section 21(1) period, or where an opposition is filed and dismissed, the Registrar shall, subject to section 23(1) or section 19, enter the mark on the register.
Rule 53(2), what the entry contains. The date of filing of the application, the actual date of registration, the goods or services and the class or classes, and all the particulars section 6(1) requires, including:
- the address of the proprietor's principal place of business in India, or of such joint proprietors as have one;
- where he has no place of business in India, his address for service in India together with his address in his home country;
- for a jointly owned mark where none of the joint proprietors has an Indian place of business, the address for service together with each proprietor's home country address;
- the particulars of the trade, business, profession, occupation or other description of the proprietor;
- particulars affecting the scope of the registration or the rights conferred by it;
- the convention application date, if any, under section 154;
- the fact that the mark is a collective or certification trade mark;
- the fact that it was registered under section 11(4) with the consent of the proprietor of an earlier mark or other earlier right; and
- the appropriate office of the Registry in relation to the mark.
Note two entries in that list. The register shows the date of filing and the actual date of registration separately, which is how relation back is recorded. And it shows a consent given under section 11(4), so that anybody searching sees why two similar marks are both on the register.
Rule 55, death of the applicant. Where an applicant dies after the date of his application and before the mark is entered, the Registrar may, on request in Form TM-M and on proof of the death and of the transmission of the interest, substitute the name of the successor in interest, and the application proceeds as amended.
Rule 56, the certificate. It shall be on Form RG-2, shall include the trade mark, and shall bear the seal of the Registry. Rule 56(2) is the point students miss: the certificate of registration shall not be used in legal proceedings or for obtaining registration abroad; the certificate issued under section 137 is used for those purposes. Rule 56(3) permits duplicate or further copies on a request in Form TM-M with the prescribed fee, with a proviso that none shall be issued where the request is received after the time limit for renewal and restoration has expired.
Registration and the Certificate
Worked example
Anand Bhat files an application for the mark SHIVAM for bicycles on 12 January 2026.
It is examined, accepted, advertised on 30 June 2026, and not opposed. The four months under section 21(1) expire on 30 October 2026. The Registrar registers the mark on 20 December 2026.
What date is the date of registration? 12 January 2026, the date of the application, by section 23(1). The register will show 12 January 2026 as the date of filing and 20 December 2026 as the actual date of registration, under rule 53(2).
When does the registration expire? Ten years from 12 January 2026, under section 25(1), that is 12 January 2036.
The eighteen months. Section 23(1) requires registration within eighteen months of filing, that is by 12 July 2027. The Registrar met it.
Now change a fact. Suppose Anand had failed to file a document the Registrar called for, and by 12 January 2027 registration was not complete because of his default. Section 23(3) applies: the Registrar may send a notice in Form RG-1 under rule 52 giving twenty one days, extendable by not more than one month on a Form TM-M request, and if Anand still does not complete, the application may be treated as abandoned.
And suppose Anand dies in September 2026. Rule 55: his successor in interest applies on Form TM-M with proof of the death and of the transmission, and is substituted as applicant. The application proceeds.
Finally, Anand sues an infringer and produces his registration certificate. Rule 56(2) says the certificate is not to be used in legal proceedings. He must obtain a certificate under section 137, which is the provision that makes a certified copy of an entry evidence, and chapter 1150 works it.
The three dates that matter
| Date | What it is | Provision |
|---|---|---|
| Date of application | The date the application was made, or the convention date | s.23(1), s.154(2) |
| Date of registration | Deemed to be the date of application | s.23(1) |
| Actual date of registration | The day the entry was made, recorded in the register | r.53(2) |
| Eighteen months | The outer limit for registering an accepted, unopposed application | s.23(1), inserted 2010 |
| Twelve months | After which default by the applicant may lead to abandonment | s.23(3) |
| Twenty one days | The Form RG-1 notice period, extendable by up to one month | r.52 |
What it does NOT mean
The eighteen month limit is not a right to registration. It binds the Registrar in point of time; it does not convert a refusable mark into a registrable one, and it does not run where the application is opposed and the opposition is still being fought.
Registration and the Certificate
The certificate is not the registration. The registration is the entry in the register. The certificate is evidence of it for the proprietor's own purposes, and rule 56(2) expressly excludes it from use in legal proceedings.
And section 23(3) is not a general power to abandon. It requires default on the part of the applicant and a notice, and it applies only where registration is not completed within twelve months of the application.
Quick revision
s.23(1): subject to s.19, where the application is accepted and either unopposed with the time expired or opposed and decided in the applicant's favour, the Registrar shall, unless the Central Government otherwise directs, register the mark within eighteen months of filing; and the mark when registered is registered as of the date of the making of the application, that date being deemed the date of registration, subject to s.154.
s.23(2): a certificate in the prescribed form, sealed with the seal of the Trade Marks Registry. s.23(3): where registration is not completed within twelve months by the applicant's default, the Registrar may, after notice, treat the application as abandoned. s.23(4): correction of a clerical error or obvious mistake in the register or the certificate.
r.52: Form RG-1, twenty one days, extendable by not more than one month on Form TM-M. r.53(2): the entry shows the date of filing and the actual date of registration, the goods and classes, the s.6(1) particulars, any convention date, whether it is a collective or certification mark, any s.11(4) consent, and the appropriate office.
r.55: death of the applicant, substitution on Form TM-M with proof of death and transmission. r.56: Form RG-2, and the certificate may not be used in legal proceedings or to obtain registration abroad; use a s.137 certificate for that.
Test yourself
1. From what date is a trade mark registered? From the date of the making of the application, which section 23(1) deems to be the date of registration, subject to section 154 where a convention priority date applies.
2. What is the eighteen month provision, and where does it come from? Section 23(1) requires the Registrar to register an accepted application, which is unopposed with the time expired or has been opposed and decided in the applicant's favour, within eighteen months of the filing of the application. The words were inserted by section 4 of the Trade Marks (Amendment) Act, 2010.
3. When may an application be treated as abandoned under section 23(3)? Where registration is not completed within twelve months from the date of the application by reason of default on the part of the applicant, and the applicant does not complete it within the time specified in a notice given in the prescribed manner.
Registration and the Certificate
4. May the certificate of registration be produced in court? No. Rule 56(2) provides that the certificate of registration shall not be used in legal proceedings or for obtaining registration abroad, and that the certificate issued under section 137 is to be used for those purposes.
5. Name four things the entry in the register must show. Any four of: the date of filing of the application; the actual date of registration; the goods or services and the class or classes; the proprietor's principal place of business in India or his address for service with his home country address; his trade, business or occupation; particulars affecting the scope of the registration; the convention application date; the fact that the mark is a collective or certification trade mark; a consent given under section 11(4); and the appropriate office of the Registry.
The rest of this subject
These notes are cut from the University's printed syllabus. Open the syllabus itself, or the past papers, for the same subject.