Chapter 3: The Trade Marks Act, 1999

CHAPTER III: PROCEDURE FOR AND DURATION OF REGISTRATION

Section 18: Application for registration

This section details the first formal step: how to file an application.

• Section 18(1):
  • What it says (Simple English): Any person (or company) who claims to be the owner of a trademark, and is either already using it or intends to use it in the future, must apply in writing to the Registrar in the “prescribed manner” (i.e., using the official forms and paying the fee).
  • What it means (Real-world Example): You have a new business idea for a food delivery app called “ZING.” You don’t have to wait until you launch the app. You can file a trademark application for “ZING” today on a “proposed to be used” basis.
• Section 18(2):
  • What it says (Simple English): You can file one single application to register a trademark in multiple classes (categories of goods/services), but you must pay the government fee for each class you include.
  • What it means (Real-world Example): You want to register your brand “HERO” for “bicycles” (Class 12) and for “educational services” (Class 41). You can file one “multi-class” application that lists both, but you will have to pay the application fee twice (once for Class 12 and once for Class 41).
• Section 18(3):
  • What it says (Simple English): You must file your application at the correct branch office of the Trade Marks Registry—the one that has jurisdiction over your “principal place of business” (your main office or HQ).
  • What it means (Real-world Example): Your company’s head office (principal place of business) is in Bangalore, Karnataka. You must file your application with the Chennai branch office, because the Chennai office is legally assigned to handle the territory of Karnataka.
• Proviso to Section 18(3):
  • What it says (Simple English): If the applicant is a foreign company (e.g., based in the USA or Japan) and does not have a “principal place of business” in India, they must file at the branch office that covers their “address for service” in India.
  • What it means (Real-world Example): Apple Inc., based in California, wants to register a new trademark in India. They hire a trademark lawyer in Delhi. That lawyer’s office becomes the “address for service.” Therefore, Apple must file the application at the Delhi Trade Marks Registry.
• Section 18(4):
  • What it says (Simple English): The Registrar (the trademark examiner) has three basic options: (1) refuse the application, (2) accept it “absolutely” (as-is), or (3) accept it subject to conditions, amendments, or limitations.
  • What it means (Real-world Example):
    1. Refuse: “Your mark ‘BEST SOAP’ is refused under Section 9(1)(b) because it is descriptive.”
    2. Accept Absolutely: “Your mark ‘ZODIAC’ for shirts is unique and distinctive. It is accepted.”
    3. Accept with Conditions: “I will accept your mark ‘JAIPUR JEWELS’ only if you agree to a ‘limitation’ that your rights are restricted to goods sold in the state of Rajasthan only.”
• Section 18(5):
  • What it says (Simple English): If the Registrar refuses your application or accepts it with conditions, they must provide their reasons in writing, as well as the “materials used” (i.e., the evidence) to reach that decision.
  • What it means (Real-world Example): The Registrar can’t just say “refused.” They must issue a formal “Examination Report” that says, “Your application is refused under Section 11(1) because it is confusingly similar to the earlier registered mark ‘XYZ’ (Application No. 12345), which was the material I used in my decision.”

Section 19: Withdrawal of acceptance

• What it says (Simple English): This is an “undo” button for the Registrar. If the Registrar has already accepted an application but before it is officially registered, they can withdraw that acceptance if they are satisfied that:
  • (a) The application was accepted in error; or
  • (b) Under the circumstances, the mark should not be registered, or should only be registered with different conditions than the ones first proposed.
• The Registrar must give the applicant a chance to be heard before doing this.
• What it means (Real-world Example): An examiner accepts your application for “ZENGO” on March 1st. But on March 15th, (before registration) the examiner discovers an earlier, very similar mark, “ZENGO” (with a ‘G’), which they had missed in error. The Registrar can withdraw the acceptance, and your application is moved back to the “objected” or “refused” status, forcing you to argue your case again.

Section 20: Advertisement of application

This section describes the vital “public notice” step in the trademark process.

• Section 20(1):
  • What it says (Simple English): Once an application has been accepted (either fully or with conditions), the Registrar must “as soon as may be” (as soon as possible) advertise the accepted application in the “prescribed manner” (which is the official Trade Mark Journal).
  • What it means (Real-world Example): Your mark “MyNewBrand” is accepted by the examiner on October 26th. A few weeks later, it is published in the official “Trade Mark Journal” (which is now online). This publication starts a four-month clock for any other person (e.g., a competitor) to see it and file an “opposition” (a formal challenge) against it.
• Proviso to Section 20(1):
  • What it says (Simple English): In some exceptional cases (like when the mark is borderline descriptive under Section 9 or borderline similar under Section 11), the Registrar can choose to advertise the application before accepting it.
  • What it means (Real-world Example): This is known as “Advertised Before Acceptance.” The examiner is “on the fence.” They aren’t sure if your mark “GURGAON SWEETS” is distinctive enough. So, they publish it before accepting it, as if to say, “Let’s see if anyone from the public objects. If no one objects within four months, then I’ll accept it.”
• Section 20(2):
  • What it says (Simple English): If, after an application has already been advertised, it is corrected or amended, the Registrar has two options:
    • (a) If the change is major (like changing the mark itself), they can force you to re-advertise the application, starting the four-month opposition clock all over again.
    • (b) If the change is minor (like fixing a typo in your address), they can just notify the correction in the Journal without re-advertising the whole thing.
  • What it means (Real-world Example): Your “ABC” logo is advertised. If you then try to amend it to the “XYZ” logo, the Registrar will say “No, that’s a new mark. Re-advertise.” But if you just correct a typo in your own name from “Pvt Ltd” to “Pvt. Ltd.”, the Registrar will just notify this minor change.

Section 21: Opposition to registration

This section details the legal battle that can happen after an application is advertised but before it is registered.

• Section 21(1):
  • What it says (Simple English): Any person in the world can decide to oppose your application. They have four months from the date your application was advertised in the Journal to file a “Notice of Opposition” (a formal complaint) with the Registrar and pay the official fee.
  • What it means (Real-world Example): Your application for “Koko-Kola” is advertised in the Journal on January 1st. The Coca-Cola Company (or any other person) sees this and believes it’s too similar to their brand. They have until May 1st (four months) to file the official opposition form (TM-O) to try and stop your registration.
• Section 21(2):
  • What it says (Simple English): The Registrar will send a copy of that opposition complaint to you (the applicant). You then have two months from the date you receive it to file your official defense, called a “Counter-Statement.” If you fail to file your defense within these two months, your application is considered “abandoned” (it’s dead).
  • What it means (Real-world Example): You receive the opposition notice from Coca-Cola on May 15th. You must file your counter-statement (arguing why your mark is different) by July 15th. If you miss this deadline, your “Koko-Kola” application is automatically rejected.
• Section 21(3):
  • What it says (Simple English): If you do file your counter-statement (your defense), the Registrar will send a copy of it back to the person who opposed you.
  • What it means (Real-world Example): You file your defense on July 10th. The Registrar sends this document to Coca-Cola’s lawyers, so they can see your arguments.
• Section 21(4):
  • What it says (Simple English): After this initial exchange, both sides must submit their evidence to the Registrar (following a prescribed timeline). Once all evidence is in, the Registrar must give both parties a chance to be heard (a “hearing”), if they want one.
  • What it means (Real-world Example): This is the “trial” phase. Coca-Cola submits evidence of its sales, advertising, and fame. You submit evidence of your own logo design and sales. After all evidence is filed, a “Hearing Officer” will schedule a final argument (usually via video conference) where both sides can plead their case.
• Section 21(5):
  • What it says (Simple English): After hearing the parties and considering the evidence, the Registrar will make a final decision: whether the registration is to be permitted, and if so, whether it needs any conditions or limitations. The Registrar can even refuse the mark on a ground that the opponent didn’t raise.
  • What it means (Real-world Example): The Hearing Officer listens to both sides. They might decide:
    1. Refused: “Koko-Kola is too similar. The application is refused.”
    2. Accepted: “The marks are different enough. The application will proceed to registration.”
    3. Conditional Acceptance: “I will permit this, but only if you agree to a ‘limitation’ that you will only use it for ‘traditional sweets’ and not for ‘beverages’.”
• Section 21(6):
  • What it says (Simple English): If either the person opposing or the applicant is based outside of India (with no business here), the Registrar can require them to “give security for the costs.” This is like a security deposit for the legal proceeding. If they fail to pay it, their side of the case (either the opposition or the application) is deemed abandoned.
  • What it means (Real-world Example): A foreign company with no assets in India files an opposition. The Registrar is worried they might just be a “troll” and will disappear, wasting the applicant’s time and money. The Registrar can order the foreign company to deposit ₹1,00,000. If they don’t, their opposition is dismissed.
• Section 21(7):
  • What it says (Simple English): The Registrar can, on “just” terms, permit either party to correct or amend any errors in their opposition notice or counter-statement.
  • What it means (Real-world Example): In your counter-statement, you made a typo and wrote “1999” instead of “2019.” You can file a request to fix this simple clerical error, and the Registrar will likely allow it.

Section 22: Correction and amendment

• What it says (Simple English): The Registrar can, at any time (before or after acceptance), permit the applicant to correct any error or amend their application, as long as it’s “just.”
• What it means (Real-world Example): You filed your application and later realized you misspelled your own street address or email. You can file a form (TM-M) to correct this. This is not for changing the trademark itself in a major way (like changing “Koko-Kola” to “Pepo-Kola”), as that would require a new application.
• Proviso to Section 22:
  • What it says (Simple English): If you filed a “multi-class” application (under Section 18(2)) and you request an “amendment” that involves dividing the application into two or more separate ones, the new, divided applications will all keep the original filing date.
  • What it means (Real-world Example): You file one application for “ZEN” on Jan 1, 2024, covering “Class 25 (Clothing)” and “Class 41 (Education).” Class 25 is accepted, but Class 41 gets an objection. You don’t want to wait. You can “divide” the application. A new application is created for “ZEN in Class 41,” which will be handled separately. Crucially, both applications (the Class 25 one and the new Class 41 one) are still considered “filed on Jan 1, 2024,” preserving your priority date.

Section 23: Registration

This is the finish line of the application process.

• Section 23(1):
  • What it says (Simple English): Barring any last-minute issues (under Section 19), once an application is accepted AND either:
    • (a) The 4-month opposition period has expired and no one opposed it; OR
    • (b) An opposition was filed, but the final decision was in favor of the applicant;
  • …the Registrar shall register the trademark. The mark is then registered as of the date the application was first filed.
  • What it means (Real-world Example): You file for “ZING” on January 1, 2024. The application is advertised, and nobody opposes it. The opposition period ends on October 1, 2025. The Registrar then issues the registration certificate. That certificate will state that your mark is “Registered as of January 1, 2024.” Your rights are back-dated to your filing date.
• Section 23(2):
  • What it says (Simple English): On registration, the Registrar shall issue the applicant a formal “Certificate of Registration” sealed with the seal of the Trade Marks Registry.
  • What it means (Real-world Example): You get the official, “stamped” document (now usually a PDF download) that proves you are the legal owner of the registered trademark. This is your “title deed” or “RC book” for the brand.
• Section 23(3):
  • What it says (Simple English): If registration isn’t “completed” within 12 months because of the applicant’s own default (e.g., they didn’t pay a fee or respond to a query), the Registrar can, after giving a final notice, treat the application as “abandoned.”
  • What it means (Real-world Example): Your mark is accepted, and the Registry sends you a notice to “pay the registration fee” to get the certificate. You forget or ignore it. After 12 months, the Registrar will send you a final warning. If you still do nothing, your application is deemed abandoned, and you have to start all over again.
• Section 23(4):
  • What it says (Simple English): The Registrar has the power to fix any “clerical error or obvious mistake” in the register or on a certificate.
  • What it means (Real-world Example): The Registry issues your certificate, but it lists your company’s name as “Pvt Ldt” instead of “Pvt Ltd.” This is an obvious clerical error that the Registrar can fix.

Section 24: Jointly owned trade marks

• Section 24(1):
  • What it says (Simple English): This Act does not authorize registering two or more persons as “joint proprietors” if they plan to use the mark independently of each other.
  • What it means (Real-world Example): Two separate, competing companies (like “Pepsi” and “Coke”) cannot apply to be “joint owners” of the trademark “FIZZ” and then both use it on their own rival products. That would just confuse the public.
• Section 24(2):
  • What it says (Simple English): This is the exception. You can register as “joint proprietors” only if the relationship between the owners is such that no one person can use it except:
    • (a) On behalf of all of them (like a partnership); or
    • (b) In relation to a product/service that they are all connected to.
  • What it means (Real-world Example): Two brothers, Ramesh and Suresh, start a single partnership business called “R&S Sweets.” They can apply to register the trademark as “Ramesh Kumar and Suresh Kumar” as “joint proprietors.” The mark represents their one, single, unified business, not two separate ones.

Section 25: Duration, renewal, removal and restoration of registration

This section covers the 10-year life cycle of a trademark.

• Section 25(1):
  • What it says (Simple English): A trademark registration is valid for 10 years from its date of registration. It can be renewed “from time to time” (i.e., indefinitely).
  • What it means (Real-world Example): If your mark’s registration date is Jan 1, 2024, it is valid until Jan 1, 2034. You can then pay to renew it until 2043, then 2053, and so on, forever, as long as you pay the fee.
• Section 25(2):
  • What it says (Simple English): The Registrar will renew the mark for another 10 years on an application by the proprietor (owner) and on payment of the renewal fee.
  • What it means (Real-world Example): Sometime before Jan 1, 2034, you (the owner) must file the official renewal form (TM-R) and pay the government renewal fee.
• Section 25(3):
  • What it says (Simple English): The Registrar must send a reminder notice to the owner (usually 6 months before expiry) telling them the renewal is due. If, at the expiration date, the fee hasn’t been paid, the Registrar “may remove the trade mark from the register.”
  • What it means (Real-world Example): In July 2033, the Registry sends you a reminder that your mark expires on Jan 1, 2034. You do nothing. On Jan 2, 2034, the status of your mark changes from “Registered” to “Expired.”
• Proviso to Section 25(3):
  • What it says (Simple English): This is the grace period. The Registrar shall not remove the mark if the owner files for renewal within six months after the expiration date, as long as they pay the renewal fee plus a “surcharge” (a late fee).
  • What it means (Real-sExample): You missed the Jan 1, 2034 deadline! You still have a 6-month grace period (until July 1, 2034). You can file your renewal in this period, but you must pay the renewal fee plus the late fee. If you do, your mark is saved and renewed.
• Section 25(4):
  • What it says (Simple English): This is the last-ditch restoration phase. If a mark has been “removed” (because you missed the expiry date and the 6-month grace period), the Registrar can still “restore” it. The owner must apply between 6 months and 1 year after the expiry date and pay the restoration fees.
  • What it means (Real-world Example): Your mark expired on Jan 1, 2034. You missed the grace period, which ended on July 1, 2034. The mark is now “Removed.” You still have one last window (from July 2, 2034, to Jan 1, 2035) to file for restoration. If you do, and the Registrar agrees it is “just,” your mark is brought back to life. After Jan 1, 2035, it is gone forever.

Section 26: Effect of removal from register for failure to pay fee for renewal

This section deals with the “ghost” of an expired trademark.

• What it says (Simple English): When a trademark is “removed” from the register (because you failed to pay the renewal fee and missed the 6-month grace period), it doesn’t just vanish. For one year after its removal, it is still deemed to be on the register for the purpose of blocking new, similar applications.
• What it means (Real-world Example): Your “STAR” trademark registration is removed on Jan 1, 2024. A competitor files a new application for “STAR” on March 1, 2024. The trademark examiner can still refuse the competitor’s application by citing your “removed” mark, because your “ghost” mark still haunts the register until Jan 1, 2025. This gives the original owner a 1-year buffer to seek restoration (under Sec 25(4)).
• Exceptions to Section 26: The “ghost” mark cannot be used to block a new application if the new applicant can prove:
  • (a) That there was no “bona fide” (genuine) commercial use of the removed trademark during the two years immediately preceding its removal; OR
  • (b) That no deception or confusion would be likely to arise from the use of the new mark (e.g., the goods or services are totally different).
• What it means (Real-world Example):
  • (a) Your “STAR” mark is removed. A competitor applies. You object, citing your “ghost” mark. The competitor proves you hadn’t actually sold any “STAR” products since 2021 (more than 2 years before removal). The tribunal will ignore your “ghost” mark and allow the competitor’s application.
  • (b) Your “STAR” mark for bicycles (removed) is cited against a new application for “STAR” for software. The new applicant can argue that no one would be confused, so the “ghost” mark should be ignored.