Judgement to increase transparency in functioning of the Trademark Registry

Trademark infrignement

A recent judgment makes it mandatory for the Registrar to record in writing the grounds for refusal or conditional acceptance of the application for registration of Trademarks.

This deviates from the prevailing practice in which the Registrar could refusal or conditional accept registration of Trademarks without recording the grounds for the same. Subsequently, the Applicant could apply to the Registrar seeking grounds for refusal or conditional acceptance. Such a practice was consistent with the provision of Rule 36(1) of the Trade Marks Rules, 2017, which is reproduced below.

36. Decision of Registrar.— (1) The decision of the Registrar under rules 33, 34 or 41 shall be communicated to the applicant in writing at his address of service and if the applicant intends to appeal from such decision he may within thirty days from the date of such communication apply in Form TM-M to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.

While the prevailing practice was consistent with the aforementioned rule, Section 18(5) of the Trade Marks Act, 1999, requires the Registrar to record in writing the grounds for such refusal or conditional acceptance.

18. Application for registration.

(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

Taking into cognizance the inconsistence between the provision of Section 18(5) and Rule 36(1), the Court held that Section 18(5) prevails over Rule 36, thereby making it henceforth mandatory for the Registrar to communicate grounds for refusal or conditional acceptance of application for registration of trademark. 

Useful download: Judgement in the matter of Intellectual Property Attorneys Association Versus The Controller General Of Patents, Designs & Trade Marks & Anr

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