Who May Apply, and the Application
Chapter Twenty-Five
Syllabus topic 1.4, "Conditions and Procedure for Registration of Trademarks."
Pages 113 to 116 of 742
In one line
Section 18 says who may apply, where, in how many classes, and what the Registrar may do with the application.
In the wording a student can write in an exam: section 18(1) requires an application in writing to the Registrar in the prescribed manner by a person claiming to be the proprietor; section 18(2) permits a single application for different classes, with the fee payable for each class; section 18(3) fixes the office by the applicant's principal place of business in India, or by the address for service where he has none; section 18(4) empowers the Registrar to refuse, or to accept absolutely or subject to amendments, modifications, conditions or limitations; and section 18(5) requires him, on a refusal or conditional acceptance, to record the grounds and the materials used in arriving at his decision.
Section 18 broken down
Sub-section (1). Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner.
Sub-section (2). A single application may be made for registration of a trade mark for different classes of goods and services, and the fee payable shall be in respect of each such class. Multi class filing was one of the changes the 1999 Act made, and chapter 380 works it.
Sub-section (3), where to file. In the office of the Trade Marks Registry within whose territorial limits the applicant's principal place of business in India is situate, or, in the case of joint applicants, that of the applicant whose name is first mentioned as having a place of business in India. Proviso: where the applicant or any joint applicant does not carry on business in India, the application shall be filed in the office within whose territorial limits the place mentioned in the address for service in India is situate. Chapter 260 works the offices and rule 4.
Sub-section (4), what the Registrar may do. Subject to the provisions of the Act, he may refuse the application, or accept it absolutely, or accept it subject to such amendments, modifications, conditions or limitations as he thinks fit.
Sub-section (5), reasons. In the case of a refusal or a conditional acceptance, the Registrar shall record in writing the grounds for it and the materials used by him in arriving at his decision.
Sub-section (5) is the appeal's foundation. An appeal lies under section 91 to the High Court, and it cannot be argued unless the Registrar's grounds and materials are on the record. A student asked about natural justice in the Registry should cite it.
Who May Apply, and the Application
What the application contains
Form TM-A, under rule 23. Rule 23(1) requires an application for registration of a trade mark in respect of goods or services in a class or classes to be made in Form TM-A, and the rule and the following rules set out what must accompany it.
The particulars, in outline.
- The applicant's name, address and nationality, and where a partnership, the names of all partners, under rule 15.
- The address for service in India, under rule 17.
- A representation of the mark, under rule 26, in the size and form the rule requires.
- The specification of goods or services and the class, under rule 20.
- A statement of user, under rule 25: an application shall state the period during which, and the person by whom, the mark has been used, unless it is proposed to be used, and where use is claimed an affidavit testifying to it with supporting documents is required.
- Any claim to priority under section 154, with the particulars rule 24 requires.
- Where the mark contains a word in a script other than Hindi or English, a transliteration and translation, under rule 28.
- The statement of the principal place of business in India, under rule 16.
Rule 31 deals with deficiencies. Where an application does not comply with the requirements, the Registrar may treat it as not having been made until the deficiency is remedied, subject to rule 10(2).
Rule 32, acknowledgement. Every application is acknowledged, and the acknowledgement carries the application number, which is the number every later step is keyed to.
Worked example
Sameer Joshi trades from Pune and makes cricket equipment. He also runs coaching camps.
What he files. One Form TM-A, under section 18(2), naming class 28 for sporting articles and class 41 for education and training services, and paying the class fee twice.
Where. Rule 4 and section 18(3) send him to the office of the Registry whose territorial limits include Pune, which is the Mumbai office. Chapter 260 works the allocation.
What he claims. He has sold equipment since 2016 but has not yet begun the coaching. So he claims use from 2016 for class 28, with the affidavit and supporting documents rule 25 requires, and proposed to be used for class 41.
A trap. He files the affidavit for class 28 but attaches invoices dated 2019 only. The claim to use since 2016 is then unsupported, and an opponent will use the discrepancy. A statement of user is a statement on which the whole application can turn, and it should be no wider than the evidence.
What the Registrar may do. Under section 18(4) he may refuse; accept absolutely; or accept subject to conditions or limitations, for example accepting class 28 with a disclaimer of a descriptive element under section 17, or with a limitation as to colour under section 10, or restricting the specification. If he refuses or accepts conditionally he must record his grounds and his materials, under section 18(5).
Who May Apply, and the Application
Application routes compared
| Single class | Multi class, s.18(2) | Convention, s.154 | International, s.36D | |
|---|---|---|---|---|
| Form | TM-A | TM-A | TM-A with a priority claim | The Common Regulations form, through the Registry |
| Fee | One class fee | One per class | As for the corresponding domestic application | International fees to WIPO |
| Effective date | Date of application | Date of application | The convention filing date | Date of the international registration |
| Where filed | Appropriate office, s.18(3) | Appropriate office | Appropriate office | Head office or notified branch, s.36C |
| Division possible? | Not applicable | Yes, and the initial date is preserved, proviso to s.22 | Yes | Under the Common Regulations |
What it does NOT mean
A single application for several classes is not one registration. It is a convenience of filing. The fee is per class, and each class stands or falls separately; a division under the proviso to section 22 keeps the original date.
"In the prescribed manner" is not decoration. An application that does not comply with the Rules may be treated as not made, and rule 10(5) makes a document filed with an insufficient fee deemed not to have been filed at all.
And section 18(4) is not a power to refuse for any reason. It is "subject to the provisions of this Act", so the grounds are those the Act supplies, chiefly sections 9, 11, 13 and 14. Section 18(5) then requires the grounds to be recorded.
Quick revision
s.18(1): application in writing, in the prescribed manner, by a person claiming to be the proprietor of a mark used or proposed to be used by him.
s.18(2): a single application for different classes, the fee being payable for each class.
s.18(3): file at the office covering the applicant's principal place of business in India; for joint applicants, that of the first named applicant having a place of business in India; and where he does not carry on business in India, the office covering his address for service.
s.18(4): the Registrar may refuse, accept absolutely, or accept subject to amendments, modifications, conditions or limitations.
s.18(5): on refusal or conditional acceptance he shall record in writing the grounds and the materials used in arriving at his decision.
Form TM-A, rule 23. Statement of user, rule 25, with an affidavit where use is claimed. Representation, rule 26. Priority, rule 24. Transliteration and translation, rule 28. Deficiencies, rule 31.
Who May Apply, and the Application
Test yourself
1. Where must an application be filed, and what if the applicant has no business in India? At the office of the Trade Marks Registry within whose territorial limits his principal place of business in India is situate, or in the case of joint applicants that of the first named applicant having a place of business in India. Where he does not carry on business in India, at the office covering the place given as his address for service in India, under the proviso to section 18(3).
2. What are the Registrar's three options on an application? To refuse it; to accept it absolutely; or to accept it subject to such amendments, modifications, conditions or limitations as he thinks fit, under section 18(4).
3. What must the Registrar do if he refuses or conditionally accepts? Record in writing the grounds for the refusal or conditional acceptance and the materials used by him in arriving at his decision, under section 18(5).
4. Is the fee for a multi class application a single fee? No. Section 18(2) requires the fee to be paid in respect of each class of goods or services covered.
5. What is a statement of user and why does it matter? It is the statement, required by rule 25, of the period during which and the person by whom the mark has been used, supported where use is claimed by an affidavit and documents. It matters because the claimed date of first use fixes the applicant's position against earlier and later marks, and an unsupported claim is the first thing an opponent attacks.
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.