USE OF TM AND REGISTERED USERS

USE OF TM AND REGISTERED USERS

u  Section 46 in The Trade Marks Act, 1999

u  46. Proposed use of trade mark by company to be formed, etc.—

u  (1) No application for the registration of a trade mark in respect of any goods or services shall be refused nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark if the Registrar is satisfied that—

u  (a) a company is about to be formed and registered under the Companies Act, 2013  and that the applicant intends to assign the trade mark to that company with a view to the use thereof in relation to those goods or services by the company, or

u  (b) the proprietor intends it to be used by a person, as a registered user after the registration of the trade mark.

u  American Home Products Corporation v. Mac Laboratories (P) Ltd AIR 1986 SC 137

u  Removal from Register on Ground of Non Use Section 47 in The Trade Marks Act, 1999

u  47. Removal from register and imposition of limitations on ground of non-use.—

u  (1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either—

u  (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or

u  (b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being: Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of the goods or services in question, or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to—

u  (i) goods or services of the same description; or

u  (ii) goods or services associated with those goods or services of that description being goods or services, as the case may be, in respect of which the trade mark is registered.

u  Exception

u  (3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates.

u  Burden lies on the registered proprietor of the trade mark to establish exceptions to Section 47(3)

u  Bona fide intention

u  American Home Products Corporation v. Mac Laboratories (P) Ltd AIR 1986 SC 137

u  https://indiancaselaws.wordpress.com/2015/08/09/american-home-products-corporation-v-mac-laboratories-pvt-ltd-and-anr/

u  Conditions for satisfaction before removal

u  Hardie Trading Ltd v Addisons Paint & Chemicals Ltd (2003) 11 SCC 92

u  (i) Application by Aggrieved Person

u  (ii) TM not used for three months prior to the date of application

u  (iii) there were no special circumstances which affected the use of the trade mark during this period by the proprietor

u  First two to prove onus falls on the applicant

u  Last one on the proprietor

u  Aggrieved Person has to prove locus standi

u  Sec 18

u  1. Proprietor can apply in prescribed manner

u  2. Single application

u  3. Territorial limits

u  4. Registrar may accept or reject it

u  5. Grounds of refusal to be mentioned

u  Sec 46: 46. Proposed use of trade mark by company to be formed

u  1.  No application shall be refused on the ground only that it appears that the applicant does not use or propose to use the trade mark if the Registrar is satisfied that

u  a.  a company is about to be formed and the applicant intends to assign the trade mark to that company

u  b. proprietor intends it to be used by a person

u  2. The provisions of section 47 shall have effect

u  3. The tribunal may require the applicant to give security for the costs of any proceedings 

u  4. within such period as may be prescribed or within such further period not exceeding six months 

u  Sec 47. Removal from register and imposition of limitations on ground of non-use.

u  1. A registered trade mark may be taken off the register

u  a.  that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user

u  b. up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered

u  2. a. if exported

u  b. honest concurrent use (sec 12)

u  3. restrictions on the use of the trade mark in India imposed by any law or regulation 

u  Sec 48. Registered users

u  (1) Subject to the provisions of section 49, a person other than the registered proprietor of a trade mark may be registered as a registered user thereof in respect of any or all of the goods or services in respect of which the trade mark is registered.

u  (2) The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for the purposes of section 47 or for any other purpose for which such use is material under this Act or any other law.

u  Sec 49. Registration as registered user.

u  (1) Where it is proposed that a person should be registered as a registered user of a trade mark, the registered proprietor and the proposed registered user shall jointly apply in writing to the Registrar in the prescribed manner

u  (a) the agreement in writing or a duly authenticated copy thereof

u  (b) an affidavit made by the registered proprietor

u  (i) giving particulars of the relationship, existing or proposed, between the registered proprietor and the proposed registered user

u  (ii) stating the goods or services in respect of which registration is proposed;

u  (iii) stating the conditions or restrictions

u  (iv) stating whether the permitted use is to be for a period or without limit of period,

u  (c) such further documents or other evidence as may be required

u  (2) the Registrar shall register the proposed registered user

u  (3) The Registrar shall issue notice in the prescribed manner

u  (4) The Registrar shall, if so requested by the applicant, take steps for securing that information given is not disclosed to rivals in trade.

 


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