This section provides power to the registrar to withdraw his order of acceptance under certain circumstances laid down in the section. The section expressly makes it obligatory on the registrar, in such a case, to give an opportunity to the applicant to be heard.
Withdrawal of Acceptance
It is desirable that the registrar of Trademarks should hear the applicant as well as the alleged objections, decide the question whether the applicant through trademark “Gutka” has acquired any reputation in relation to goods like the term “safi” on the basis of evidence which may be produced and in the light of the fact the word “Gutka” is not an invented word and it is being sought to be used in isolation and not with any other word.
Trademark Registration Procedure
Section 18,19,20,21 and 22 of the act lay down the procedure for application for registration, its acceptance by the registrar, the withdrawal of his acceptance in certain cases, the opposition for registration and correction or amendment and the advertisement of the application for registration. From these sections 18 to 22, one thing is clear that when an applicant makes his application for registration. The stage which follows after advertisement appears to throw the burden upon those who are opposing to prove their opposition and the onus is upon them to show that what the registrar has prima facie accepted is not entitled to registration.
Section 21(1) of the old act lays down the limitation during which a person may give notice of opposition to the registration. It also lays down the starting point of period of limitation which is the date of advertisement or re-advertisement of an application for registration.
Advertisement of Application: Infringement of Trademark
The plaintiff company registered the trademark “Modern” in respect of tread in 1985. The defendant firm claimed to be the prior user since 1949, but applied for registration only in September 2000 which was advertised in April 2005. The plaintiff company had due knowledge of the business of the firm for a long-time, but did not take any steps till the suit was filed. The Copyright Registration Certificate shows that the company is the user of the said trademark “MODERN” since 1970 and is the registered proprietor of the trademark “MODERN” since 1985.
Opposition to registration
Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner.
Scope and Applicability
With regard to notice of opposition to registration the provisions of (old) section 21 of the (old) act are specific. The general provisions contained in (old) section 101 will not be applicable on the principle.
The opposition to the registration of a trademark may be made by ” any person” and not only by a ‘person aggrieved’. The reason is that public interests are also to be considered and the point of view of the public heard. Section 21(1) of the act lays down the limitation during which a person may give notice of opposition to the registration. It also lays down the starting point of period of limitation which is the date of advertisement or re-advertisement of an application for registration.
Effect of Withdrawal Application
Where an application for trademark registration withdraws his application on the opposition of another person, the person who opposed cannot on that ground claim proprietary right for himself over that mark. The words “Any person” referred to above need not be only a prior registered trademark owner. Even a customer, a purchaser, or a member of the public likely to use the goods may object to the trademark registration in respect of such goods on the ground of possible deception or confusion.
Conditions – Limitations
The words “Conditions” and “Limitations” have no reference to the power of amendment to the trademark. The words “conditions” and “limitations” have reference to such things like mode of user of the trademark or as to the area of the user. The only power the registrar has of allowing amendment of a trademark proposed for registration is before or at the time of acceptance of the mark for advertisement for purpose of registration.
When an application for the trademark registration has been accepted, it has to be advertised as provided in section 20 of the act.
Upon an application for registration having been made, advertisements were issued and a notice of opposition was received. Without considering the opposition and hearing the parties, the registration was effected. Under such circumstances, the provision of section 23(1)(b) applies and one of the pre-conditions is that the opposition should be decided in favor of the applicant. In other words before an application for registration is granted, the opposition must be considered and rejected.
Opposition to Trademark Registration
Notice of opposition to trademark registration and counter-statement are like plaint and written statement. Where the opponent admits that he acquired the registered proprietary right of the trademark “GUPTA” and that right was passed on firm after the firm was dissolved, the burden on firm to prove that the other partner transmitted his right in favor of the opponent.
Extension of time
Request on Form TM-44 was made for extension of time for filling application under section 21(1) of the trademarks act 1999. Section 21(1) of the said act read with rule 47(1) of the trademarks rules 2002 empower the registrar to extend time even though it has expired.
Correction and amendment
The registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for trademark registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application.