TM Post-Registration

Duration and Renewal

A trade mark shall be registered for a period of ten years from the date of registration. Registration may be renewed  for further periods of ten years.

Subject to payment of the prescribed renewal fee, the registration of a trade mark may be renewed at the request of the owner. Where the request is submitted or the fees paid for only some of the goods or services for which the trade mark is registered, registration shall be renewed for those goods or services only.

There are rules by which the Controller to inform the owner of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed. A request for renewal must be made, and the prescribed renewal fee must be paid before the expiry of the registration.

A request for renewal may be made and the fee paid within such further period (of not less than six months) as may be prescribed; in which case the prescribed additional renewal fee must also be paid within that period. A term of renewal shall take effect from the expiry of the previous registration.

If the registration is not renewed, the Controller removes the trade mark from the register. The rules may provide for the restoration of the registration of a trade mark which has been removed from the register, subject to such conditions (if any) as may be prescribed. The renewal, removal or restoration of the registration of a trade mark shall be published in the Journal.

Alteration

The owner of a registered trade mark may apply in the prescribed manner to the Controller for leave to add to or alter the trade mark in any manner which does not substantially affect its identity; and the Controller may refuse leave or grant it on such terms and subject to such limitations as the Controller thinks fit.
In any case, where it appears to the Controller expedient to do so, the Controller may cause an application to be advertised in the Journal.

If within the prescribed time from the date of the advertisement of an application, any person gives notice to the Controller in the prescribed manner of opposition to the application, the Controller shall, after hearing the parties if so required, decide the matter.

Where leave is granted and the trade mark concerned, in its altered form, has not already been advertised in an advertisement of the application, the trade mark, in its altered form, shall be advertised in the Journal.

Surrender and Revocation

A registered trade mark may be surrendered by the owner in respect of some or all of the goods or services for which it is registered. Provision may be made by rules as to the manner and effect of a surrender; and for protecting the interests of other persons having a right in the registered trade mark.

The registration of a trade mark may be revoked on any of the following grounds—

• that, within the period of five years following the date of publication of the registration, the trade mark has not been put to genuine use in the State, by or with the consent of the owner, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
• that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
• that, in consequence of acts or inactivity of the owner, it has become the common name in the trade for a product or service for which it is registered;
• that, in consequence of the use made of it by or with the consent of the owner in relation to the goods or services for which it is registered, it is liable to mislead the
  public, particularly as to the nature, quality or geographical origin of those goods or services.

Use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the owner and use in the State includes affixing the trade mark to goods or to the packaging of goods in the State solely for export purposes.

Revocvation Issues

The registration of a trade mark shall not be revoked on the ground mentioned if such use as is referred to is commenced or resumed after the expiry of the five year period and before the application for revocation is made; but, for this purpose, any such commencement or resumption of use occurring after the expiry of the five year period and within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the owner became aware that the application might be made.

An application for revocation may be made by any person, and may be made either to the Controller or to the Court High Court, except that if proceedings concerning the trade mark in question are pending in the Court High Court, the application must be made to the Court High Court; and if in any other case the application is made to the Controller, he may at any stage of the proceedings refer the application to the Court High Court.

Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, the revocation shall relate to those goods or services only. Where the registration of a trade mark is revoked to any extent, the rights of the owner shall be deemed to have ceased to that extent as from— the date of the application for revocation; or if the Controller or the Court High Court is satisfied that the grounds for revocation existed at an earlier date, that date.

Revocation of a trade mark shall be entered in the register and the Controller shall publish the revocation of a trade mark in the Journal.

Grounds for Invalidity

The registration of a trade mark may be declared invalid on the grounds

• that there is an earlier qualifying trade mark unless the owner of that earlier trade mark or earlier right has consented to the registration
• that the trade mark was registered in breach of certain requirements

The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of the applicable requirements, but where a trade mark was registered in breach on certain grounds, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character it has before the date of application for a declaration of invalidity, acquired a distinctive character in relation to the goods or services for which it is registered.

In the case of bad faith in the registration of a trade mark, the Controller may apply to the Court High Court for a declaration of the invalidity of the registration.

Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those
goods or services only. Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made, provided that this shall not affect transactions past and closed.

Based on Earlier Mark

An application for a declaration of invalidity on the basis of an earlier trade mark shall not succeed at the date of application for invalidation if it would not have been successful at
the filing date or the priority date of the later trade mark for any of the following reasons:

• the earlier trade mark, liable to be declared invalid as it  had not yet acquired a distinctive character
• the application for a declaration of invalidity is based on an identical mark and the earlier trade mark had not become sufficiently distinctive to support a finding of
  likelihood of confusion;
• the application for a declaration of invalidity is based on similarity and has a reputation and the earlier trade mark had not yet acquired a reputation

An application for a declaration of invalidity may be filed on the basis of one or more earlier rights, provided they all belong to the same owner. An application for a declaration of invalidity may be made by any person and may be made either to the Controller or to the Court High Court, except that—

• if proceedings concerning the trade mark in question are pending in the Court High Court, the application must be made to the Court High Court; and
•  if in any other case the application is made to the Controller, the Controller may, at any stage of the proceedings, refer the application to the Court High Court.

Non-use as Defence

In proceedings for a declaration of invalidity based on a registered trade mark with an earlier filing date or priority date, if the owner of the later trade mark so requests, the owner of the earlier trade mark shall furnish proof that-

• during the 5 year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in connection with the goods or services in respect of which it is registered and which are cited as justification for the application, or
• there are proper reasons for non-use, provided that the registration process of the earlier trade mark has, at the date of the application for a declaration of invalidity, been completed for not less than 5 years.

Where, at the filing date or date of priority of the later trade mark, the 5 year period within which the earlier trade mark was to have been put to genuine use had expired, the owner of the earlier trade mark shall, in addition to the other proof required, furnish proof that the earlier trade mark was put to genuine use during the 5 year period preceding the filing date or date of priority of the later trade mark, or that proper reasons for non-use existed. In the absence of the proof,an application for a declaration of invalidity on the basis of an earlier trade mark shall be rejected.

If the earlier trade mark has been used in relation to only part of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect of that part of the goods or services only. This shall also apply where the earlier trade mark is a European Union trade mark and genuine use of the European Union trade mark shall be determined in accordance with Article 18 of the European Union trade mark regulation.

Effect of acquiescence.

Where the owner of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the State while being aware of that use, the owner shall no longer be entitled, on the basis of that earlier trade mark or other rights—

• to apply for a declaration that the registration of the later trade mark is invalid, or
• to oppose the use of the later trade mark in relation to the goods or services in connection with which it has been so used unless the registration of the later trade mark was applied for in bad faith.

In this case, the owner of the later trade mark shall not be entitled to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against the owner’s later trade mark.