Withdrawal of Acceptance
Chapter Thirty-Two
Syllabus topic 1.4, "Conditions and Procedure for Registration of Trademarks."
Pages 141 to 144 of 742
In one line
An acceptance can be taken back before registration if it was given in error or if the mark should not be registered, but only after the applicant has had a chance to be heard.
In the wording a student can write in an exam: section 19 provides that where, after the acceptance of an application but before its registration, the Registrar is satisfied (a) that the application has been accepted in error, or (b) that in the circumstances of the case the trade mark should not be registered or should be registered subject to conditions or limitations, or to conditions additional to or different from those subject to which the application has been accepted, he may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.
Why the power exists
Because acceptance is not the end of the examination. An application is accepted, advertised, and then somebody points out that an earlier mark was missed, or the Registrar himself notices a section 9 objection that should have been taken.
Without section 19 the only route would be opposition or rectification. Opposition depends on somebody else troubling to oppose. Rectification comes after registration and requires a person aggrieved to litigate. Section 19 lets the Registrar put his own mistake right while the file is still with him.
Section 19 broken down
The window. After acceptance, before registration. Once the mark is registered, section 19 has no application, and the route is rectification under section 57.
The two grounds.
- (a) Accepted in error. The classic case is a conflicting earlier mark that the search under rule 33(1) did not turn up, or a mark accepted by an officer without authority.
- (b) Should not be registered, or should be registered subject to conditions. Wider than (a), because it does not require an error at the time. Circumstances may have changed: the earlier mark may have been advertised after this application was accepted.
The safeguard. "After hearing the applicant if he so desires". The applicant is entitled to a hearing on demand; the Registrar is not obliged to hold one the applicant does not want.
The consequence. He may withdraw the acceptance and proceed as if the application had not been accepted. So the application is not refused; it goes back to the stage before acceptance, and the applicant may answer the objection, amend under section 22, or be heard again.
Rule 38: the machinery, and the deeming provision
Rule 38(1). If, after acceptance but before registration, the Registrar has any objection on the ground that the application was accepted in error, or that the mark ought not to have been accepted in the circumstances, or proposes that it be registered only subject to conditions, limitations, divisions or to conditions additional to or different from those already imposed, he shall communicate such objection in writing to the applicant.
Withdrawal of Acceptance
Note that rule 38(1) names divisions, which section 19 does not. That is the rule filling out the section's phrase "conditions or limitations".
Rule 38(2) is the trap, and it is a deeming provision. Unless within thirty days from the date of receipt of the communication the applicant either amends his application to comply with the Registrar's requirements or applies for a hearing, the acceptance shall be deemed to be withdrawn and the application shall proceed as if it had not been accepted.
So the applicant who does nothing loses his acceptance automatically. He does not lose the application, but he goes back to the pre-acceptance stage without ever being heard, because he did not ask.
Rule 38(3), the hearing. Where the applicant intimates within the thirty days that he desires to be heard, the Registrar shall give notice of a date, and the appointment shall be for a date at least fifteen days after the date of the notice, unless the applicant consents to shorter notice. The applicant may instead state that he does not desire to be heard and submit written submissions.
Rule 38(4). The Registrar may, after hearing the applicant, or on considering his submissions if any, pass such orders as he deems fit.
Worked example
Meera Das obtains acceptance of TIRUPATI GOLD for edible oil, and it is advertised.
Case one, error. An officer discovers that an earlier registration for TIRUPATHI GOLD for the same goods was on the register throughout and was missed in the search. The application was accepted in error, section 19(a). The Registrar issues a notice, Meera asks to be heard, and at the hearing she may argue that the marks differ, or produce the earlier proprietor's consent under the proviso to section 11(4), or narrow her specification.
Case two, changed circumstances. No earlier mark was missed, but a mark applied for six months before Meera's, which had not yet been examined at the time of her acceptance, is now advertised. Her acceptance was not an error, but the circumstances now suggest the mark should not be registered, or should be registered subject to conditions. That is section 19(b).
Case three, conditions. The Registrar concludes that TIRUPATI is a geographical name, and that the acceptance should have carried a disclaimer of that word under section 17. He may withdraw the acceptance and proceed on the footing that acceptance should be subject to that condition. Section 19(b) covers conditions "additional to or different from" those already imposed.
Withdrawal of Acceptance
What happens next. The acceptance being withdrawn, the application stands as if never accepted. The Registrar may then refuse it, or accept it afresh with conditions, in which case it is advertised again under section 20 and a fresh opposition period runs.
Section 19 and its neighbours
| s.19 | s.21 opposition | s.57 rectification | |
|---|---|---|---|
| Who moves | The Registrar, on his own | Any person | A person aggrieved, or the Registrar |
| When | After acceptance, before registration | Within four months of advertisement | After registration |
| Grounds | Accepted in error; or should not be registered, or only on conditions | Any ground of refusal | Any ground on which the entry is wrongly on or wrongly remaining on the register |
| Result | Acceptance withdrawn; the application proceeds as if not accepted | The application is refused or allowed | The register is rectified |
| Hearing | On the applicant's request within thirty days, r.38(2) | Always | Always |
What it does NOT mean
Withdrawal of acceptance is not refusal. The application returns to the pre-acceptance stage and may still succeed.
It is not available after registration. The words are "before its registration". After that, section 57 governs, and chapter 760 works it.
And the hearing is not optional for the Registrar. It is optional for the applicant. If he desires a hearing, he must be given one, and an order made without it where one was asked for would not stand.
Quick revision
s.19: after acceptance and before registration, where the Registrar is satisfied (a) the application was accepted in error, or (b) that the mark should not be registered or should be registered subject to conditions or limitations, or conditions additional to or different from those already imposed, he may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.
r.38(1): the objection is communicated in writing, and it may propose conditions, limitations or divisions. r.38(2): thirty days to amend or to apply for a hearing, failing which the acceptance is DEEMED WITHDRAWN. r.38(3): the hearing date must be at least fifteen days after the notice, unless the applicant consents to less; he may instead file written submissions. r.38(4): such orders as the Registrar deems fit.
Compare: s.21 opposition, by any person within four months of advertisement; s.57 rectification, after registration, by a person aggrieved or the Registrar.
s.23(1) opens with "Subject to the provisions of section 19", which is how the two sections are tied together.
Test yourself
1. What is the window within which section 19 operates? After the acceptance of an application for registration, and before its registration.
Withdrawal of Acceptance
2. State the two grounds in section 19. That the application has been accepted in error; or that in the circumstances of the case the trade mark should not be registered, or should be registered subject to conditions or limitations, or to conditions additional to or different from those subject to which the application has been accepted.
3. Is the applicant entitled to a hearing? Yes, if he desires one. Section 19 permits the Registrar to act "after hearing the applicant if he so desires", so a hearing must be given where asked for.
4. What is the effect of a withdrawal of acceptance? The Registrar proceeds as if the application had not been accepted, so the application returns to the pre-acceptance stage rather than being refused.
5. What happens if the applicant does nothing for thirty days after a rule 38(1) communication? Under rule 38(2) the acceptance of the application shall be deemed to be withdrawn by the Registrar, and the application shall proceed as if it had not been accepted. He must within those thirty days either amend the application to comply with the Registrar's requirements or apply for a hearing.
6. Which sub-section of section 23 recognises section 19? Section 23(1), which opens with the words "Subject to the provisions of section 19", so that the duty to register an accepted and unopposed application is expressly subject to the power to withdraw acceptance.
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.