Application for Registration
An application for registration of a trade mark is made to the Controller in a prescribed form. The application must state that the trade mark is being used, by or with the applicant’s consent, in relation to the goods or services specified in the application or that the applicant has a bona fide intention that it should be so used. The application is subject to the payment of the appropriate fee or fees.
Goods and services are classified for the purposes of the registration of trade marks in conformity with the Nice Agreement Concerning the International Classification of
Goods and Services for the Purposes of the Registration of Marks (the ‘NICE Classification’). The goods and services for which protection is sought are to be identified by the applicant with sufficient clarity and precision to enable the Controller and the public, on that sole basis, to determine the extent of the protection sought.
The use of general terms, including the general indications of the class headings of the NICE Classification, are interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term and are not be interpreted as comprising a claim to goods or services which cannot be so understood.
Where the applicant requests registration for more than one class, the applicant must
- group the goods and services according to the classes of the NICE Classification,
- precede each group by the number of the class to which that group of goods or services belongs, and
- present them in the order of the classes.
Any question arising as to the class within which any goods or services fall shall be determined by the Controller, whose decision shall be final.
A person who has duly filed an application for protection of a trade mark in a Convention country, or the successor in title to such a person, has a right to priority, for the purpose of registering the same trade mark for some or all of the same goods or services, for a period of six months from the date of filing of the first Convention application.
If the application for registration is made within this period, the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first Convention application, and the registrability of the trade mark shall not be affected by any use of the mark in the State in the period between that date and the date of the application.
Any filing which in a Convention country is equivalent to a regular national filing under its domestic legislation or an international agreement is treated as giving rise to the
right of priority. There may be a claim for priority from other relevant overseas applications.
The Government may by order make provision for conferring on a person or the successor in title to such a person, who has duly filed an application for protection of a trade mark in a country or territory a right to priority, for the purpose of registering the same trade mark for some or all of the same goods or services, for a specified period from the date of filing of that application.
The Controller shall examine whether an application for registration of a trade mark satisfies the requirements of the Trade Mark Act (including any requirements imposed by rules).If it appears to the Controller that the requirements for registration are not met, the Controller shall inform the applicant and give the applicant an opportunity, within such period as the Controller may specify, to make representations or to amend the application.
If the applicant fails to satisfy the Controller that the requirements for registration have been met, or to amend the application so as to meet them or fails to respond before the end of the specified period, the Controller shall refuse to accept the application. If it appears to the Controller that the requirements for registration are met, the Controller accepts the application.
Publication & Opposition
When an application for registration has been accepted, the Controller shall cause the application to be published in the Journal. Any person may, within the prescribed time from the date of the publication of the application in the Journal, give notice to the Controller of opposition to the registration; and opposition to the registration on one of the statutory grounds in writing in the prescribed manner, and shall include a statement of the grounds of opposition.
A notice of opposition may be filed based on one or more earlier trademarks or other earlier rights, provided that they all belong to the same proprietor.
A notice of opposition filed on the basis of one or more earlier trade marks or earlier rights may be based on a part, or the totality, of the goods or services in respect of which the earlier rights are protected or applied for, and may be directed against part or the totality of the goods or services in respect of which the contested mark is applied for.
At any stage following the commencement of opposition proceedings, the parties shall be granted, at their joint request, a stay in the proceedings for a minimum period of 2 months from the date of the request in order to allow for the possibility of a friendly settlement between the opposing party and the applicant.
Where an application has been published in the Journal, any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders, or consumers may, at any time before the registration of the trade mark, make observations in writing to the Controller explaining on which grounds the trade mark should not be registered; and the Controller shall inform the applicant of any such observations.
A person who makes observations shall not thereby become a party to the proceedings on the application. Persons and groups or bodies who make observations shall not be a party to the proceedings on the application.
Non-use as Defence
In opposition proceedings , where at the filing date or date of priority of the later trade mark, the 5 year period within which the earlier trade mark must
have been put to genuine use had expired, at the request of the applicant, the proprietor of the earlier trade mark who has given notice of opposition must
- that the earlier trade mark has been 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 proof, the opposition 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 is, for the purpose of the examination of the opposition, be deemed to be registered in respect of that part of the goods or services only.
The above also applies where the earlier trade mark is a European Union trade mark, and the genuine use of the European Union trade mark is determined in accordance with the European Union trade mark regulation.
Withdrawal or Amendment
An applicant may at any time by notice in writing withdraw his application or restrict the goods or services covered by the application; and, if the application has been
published in the Journal, any withdrawal or restriction of the application is also published in the Journal. Any such withdrawal is irrevocable after the expiry of three months from the date of the notice.
In a case not falling within the above category, an application may be amended, at the request of the applicant, so long as the amendment does not substantially affect the identity of the trade mark or extend the goods or services covered by the application. In particular, an amendment may be made (subject to that qualification) to correct—
- the name or address of the applicant;
- errors of wording or of copying; or
- obvious mistakes.
Rules provide for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application and for the making of objections by any person claiming to be affected by it.
Where an application has been accepted and no notice of opposition has been given within the required period or all opposition proceedings have been withdrawn or decided in favour of the applicant, the Controller is to register the trade mark unless it appears to him, having regard to matters coming to his notice since accepting the application, that it was accepted in error.
A trade mark must not be registered unless any fee prescribed for the registration has been paid within the prescribed period. If the fee has not been so paid, the application shall be deemed to be withdrawn.
A trade mark when registered, shall be registered as of the date of filing of the application for registration. On the registration of a trade mark the Controller shall publish the registration in the Journal and issue to the applicant a certificate of registration. The registration procedure is regarded as completed on the date of publication and that date shall be entered in the register.
Rules provider for
- the division of an application for the registration of a trade mark into several applications, each having the same filing date as the original application;
- the division of an application for the registration of a trade mark and for the division of a registration of a trade mark into several applications or registrations, each having the same filing date as the original application;
- the merging of separate applications or registrations; and
- the registration of a series of trade marks in one registration.
A“series of trade marks” means a number of trade marks which resemble each other as to their material particulars and differ only in respect of the matter of a non-distinctive character which does not substantially affect the identity of the trade mark.