LLM Group 3 Law of Intellectual Property and Information Technology Law of Trademarks 2018 Question Paper with Solutions

Filing. The application is made under SECTION 18(1) by the person CLAIMING TO BE THE PROPRIETOR of a mark USED OR PROPOSED TO BE USED, in FORM TM-A, in the office of the Registry for the applicant's principal place of business in India under section 18(3). The goods or services are specified and CLASSIFIED under SECTION 7, which follows the international classification, and one application may cover SEVERAL CLASSES under section 18(2), with a fee for each. The applicant states whether the mark is already in use and from what date, because a claim of use supports distinctiveness and priority. Filing fixes the DATE OF APPLICATION, which becomes the date of registration.

Formal check. Deficiencies notified under RULE 31 must be put right within ONE MONTH, failing which the application is treated as abandoned.

Examination. Under RULE 33 the Registry examines the application and searches the register. The EXAMINATION REPORT typically raises two kinds of objection: ABSOLUTE, that the mark is descriptive, laudatory or non distinctive under SECTION 9; and RELATIVE, that it conflicts with an earlier mark under SECTION 11. A reply must be filed within ONE MONTH, or the application may be treated as abandoned.

Opposition. Any person may oppose within FOUR MONTHS of advertisement under SECTION 21(1). The applicant must file a COUNTERSTATEMENT within TWO MONTHS or be deemed to have abandoned the application. The parties then exchange EVIDENCE BY AFFIDAVIT under RULES 45 TO 47, and the Registrar hears them under RULE 50 and decides.

Registration. Once the opposition period expires, or the opposition is decided in the applicant's favour, the Registrar REGISTERS the mark under SECTION 23, the section directing registration within EIGHTEEN MONTHS of filing. The mark is registered AS OF THE DATE OF APPLICATION and a CERTIFICATE issues.

After registration. Registration lasts TEN YEARS and is RENEWABLE indefinitely under SECTION 25. Changes of ownership are registered under SECTION 45 in FORM TM-P. The mark must be USED, because under SECTION 47(1)(b) a person aggrieved may seek its REMOVAL where, up to a date three months before his application, a CONTINUOUS PERIOD OF FIVE YEARS from the date the mark was actually entered on the register has passed without bona fide use. An appeal from any order of the Registrar lies to the HIGH COURT under SECTION 91 within three months. And the Indian application or registration may be used as the basis for an international application under the MADRID PROTOCOL through CHAPTER IVA.

Procedural default. A missed deadline is the commonest avoidable loss. The one month to reply to an examination report under rule 33(4), non appearance at a hearing under rule 33(7), and the two month counterstatement under section 21(2) each end in the application being treated or DEEMED ABANDONED.

Bad faith and want of intention. An applicant with no GENUINE INTENTION TO USE the mark risks refusal, opposition and later removal. American Home Products Corporation v. Mac Laboratories Pvt. Ltd., (1986) 1 SCC 465, requires the intention to be real at the date of application.

The advantages of registration

The statutory right itself. SECTION 28(1) gives the registered proprietor the EXCLUSIVE RIGHT TO THE USE of the mark for the registered goods or services, and the right to relief for infringement.

Infringement is available only to him. SECTION 27(1) bars any action for infringement of an UNREGISTERED mark. The unregistered owner is left to passing off under section 27(2).

The certificate proves validity. SECTION 31(1) makes the registration PRIMA FACIE EVIDENCE OF VALIDITY in all legal proceedings, and SECTION 32 saves a registration that has ACQUIRED DISTINCTIVENESS after registration and before any challenge.

The proprietor chooses the court. SECTION 134(2) lets him sue for infringement where HE resides or carries on business.

Licensing, assignment and borders. Registration opens the REGISTERED USER machinery, including the user's own right to sue under SECTION 52; registered title can be recorded under SECTION 45; and SECTION 140(1) lets the proprietor or licensee of a registered mark ask CUSTOMS to prohibit the import of infringing goods.

Deterrence on the register. Every later applicant is searched against the registered mark at examination under rule 33, so registration prevents conflicting marks from being registered in the first place, which is often worth more than any later lawsuit.

Conclusion. Registration proceeds through CLEARANCE of an inherently distinctive mark; an APPLICATION under SECTION 18 in Form TM-A, classified under SECTION 7; a formal check under RULE 31; EXAMINATION under RULE 33 against the absolute grounds in SECTION 9 and the relative grounds in SECTION 11, answered within ONE MONTH with evidence of acquired distinctiveness, consent or honest concurrent use under SECTION 12, and a show cause hearing where needed; ACCEPTANCE under SECTION 18(4); ADVERTISEMENT under SECTION 20; OPPOSITION within FOUR MONTHS under SECTION 21 with a counterstatement in TWO MONTHS; and REGISTRATION under SECTION 23 as of the date of filing, for TEN YEARS renewable under SECTION 25. The advantages of registration are the EXCLUSIVE RIGHT under SECTION 28; the INFRINGEMENT action reserved by SECTION 27(1), in which, as Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories and Ruston and Hornsby Ltd. v. Zamindara Engineering Co. hold, similarity of the marks suffices and added matter is no defence; the PRESUMPTION of confusion in SECTION 29(3); protection of a reputed mark across goods under SECTION 29(4); PRIMA FACIE EVIDENCE OF VALIDITY under SECTION 31; the plaintiff's forum under SECTION 134(2); registered user licensing; CUSTOMS enforcement under SECTION 140; and the protection that comes from every later application being examined against the registered mark.