APPEAL UNDER THE TRADEMARK LAWS

An application for registration of trademarks is submitted at the Head office or a branch office of the Trade Marks Registry within whose territorial limits the principal place of the business of the applicant is located. The digitization and formality checking of the application is done at the respective offices.

The Application is then examined predominantly with respect to whether the relevant mark is capable of distinguishing applicant’s goods or services, regardless of whether it is prohibited for registration under any law for the time being in force, whether the registration of the relevant mark is likely to cause confusion or deception because of prior identical or similar marks existing on records. The Examination of all applications is done centrally in the Head Office of the TRADE MARKS Registry at Mumbai.

The Registrar on consideration of the application and any evidence of use or distinctiveness decides whether the application ought to be acknowledged for registration or not, and whenever acknowledged, publishes the same in the Trade Marks Journal, an official gazette of the Trade Marks Registry, which is facilitated week after week on the official website.

Within four months from the date of publication any person can file the opposition in such cases the opposition proceeding is conducted at the respective office of the Trade Marks Registry.

Under opposition proceeding, a copy of the notice of opposition is served to the applicant who is required to file a counter-statement within two months failing which the application is treated as abandoned. The copy of the counter-statement is served to the opponent, who leads evidence on the side of his case by method for the affidavit, at that point the applicant leads evidence. After that, the opponent files evidence by the way of rebuttal. On completion of evidence, the matter is set down for the hearing and the case is decided by a Hearing officer. The registrar’s decision is appealable to the Intellectual Property Appellate Board.

Intellectual Property Appellate Board (IPAB) has been set up under the Trademarks Act. Section 83 of the Trademark Act, 1999 provides for the establishment of appellate board. Intellectual Property Appellate Board (IPAB) was established to hear appeals against the order of the Registrar under Trade Marks Act, 1999.

An appeal against the order of the registrar of trademarks must be filed by the person aggrieved, i.e., person against whom a decision has been pronounced which has wrongfully refused him something which he had the right to demand.

An appeal to the IPAB could be filed within 3 months from the date of receiving the order of the Registrar, even though, extension could be allowed by the appellate board on the sufficient reason for the delay, the appellant can seek the extension by filling the condonation application.