CHAPTER V – REGISTERED USERS
82.)Application
for registration as registered user.
1.) An application to the Registrar for the registration under section 49 of a person as a registered user of a
registered trade mark shall be made jointly by that person and the registered proprietor
of the trade mark on form TM – 28 and shall
be accompanied by the following documents –
(a) the agreement in writing or a duly authenticated copy thereof,
entered into between the registered proprietor and the proposed registered user with
respect to the permitted use of the trade mark;
(b) the documents and correspondence, if any, mentioned in the agreement
referred to in clause (a) or duly authenticated copies thereof;
(c) agreements, if any, or duly authenticated copies thereof, entered
into between the registered proprietor and the proposed registered user requiring the
proposed registered user to purchase from the registered proprietor or his nominees or
prohibiting him from purchasing except from the registered proprietor or his nominees, any
materials whether for the purpose of manufacturing the goods in respect of which the use
of the trade mark is to be permitted or otherwise, or containing or providing for any
conditions as regards the price at which such goods should be sold or the maintenance of
particular prices for such goods.
2.) There shall also be filed along with the application an affidavit
made by the registered proprietor or by some person authorised to the satisfaction of the
Registrar to Act on his behalf testifying to the
genuineness of the documents accompanying the application and containing;
(a) The particulars and statements required by clause (ii) of sub-section (1) of section 49;
(b) The precise relationship between the registered proprietor and the
proposed registered user, if any; for instance, whether their relationship is as managing agent and managed company, or as principal and
subsidiary company or whether there is common control between their business;
(c) A statement as to the goods in which the registered proprietor is
dealing, together with details as to whether the trade mark which is the subject of the
application has been used by him in the course of trade before the date of the application
and if so the amount and duration of such user;
(d) A statement as to whether the registered proprietor had acquired
title to the trade mark by way of assignment and if so whether he had acquired any other
trade marks by the same assignment and how he had dealt with such other marks;
(e) A statement as to whether the registered proprietor had, before the
date of the application for registration as registered user, allowed the use of the trade
mark by any person and if so by whom;
(f) A statement whether or not the proposed permitted use in intended
solely in relation to goods for export from India.
3.) The registered proprietor and the proposed registered user shall
also produce and file such other documents and furnish such other evidence and information as may be required in that behalf by the
Registrar.
4.) No application shall be entertained unless the same has been filed
within eighteen months from the date of the agreement referred to in clause (a) of
sub-rule (1).
5.) Notwithstanding anything contained in sub-rule (1), where more than
one application for registration as registered user is made by the same registered
proprietor and the same proposed registered user in respect of trade marks covered by the
same agreement, the documents mentioned in sub-rule (1) may be filed with any one of the
applications and a cross reference to such documents given in the other application or
applications.
83.)Particulars
to be stated in the agreement.
The agreement referred to in clause (a) of sub-rule (1) of the last foregoing rule shall
–
(a) set out the particulars specified in sub-clauses (a) to (d) of
clause (ii) of sub-section (1) of the last
foregoing rule shall –
(b) disclose the terms as to royalty and other remuneration payable to
the registered proprietor by the proposed registered user for the permitted use of the
trade mark;
(c) provide means for bringing the permitted use to an end when the
relationship between the parties or the control by the registered proprietor over the
permitted user ceases;
(d) contain a condition that when the registered trade mark is used by
the proposed registered user in relation to his goods, other than goods for export, the
mark shall be so described as clearly to indicate that it is being used only by way of
permitted use.
84.)Refusal
to forward by Registrar an application for non-compliance with the rules.
1.) No application for registration shall be forwarded by the Registrar
to the Central Government unless the requirements of rules 82 and 83 are complied with.
2.) Where the Registrar refuses to forward the application he shall inform the applicants in writing his reasons thereof.
85.)Consideration
by the Central Government.
The Central Government, on receipt of an application for registration as registered user
forwarded to it by the Registrar under sub-section
(2) of section 49, shall, if satisfied that
the application and the accompanying documents comply with the provisions of the Act and the rules consider whether the application
should be allowed having regard to the matters specified in sub-section (3) of that section, and in doing so may take into account
all or any of the following matters-
1.) Whether the permitted use if allowed would contravene the policy of
the Act which is to prevent trafficking in trade
marks;
2.) Whether the registered proprietor has registered the trade mark
without any bona fide intention to use it in relation to his goods in the course of trade
or solely or mainly for the purpose of permitting other to use it under agreement for
registered user; and
3.) Whether the registered proprietor has acquired title to the trade
mark by assignment without any bona fide intention to use it in relation to his goods in
the course of trade or solely or mainly for the purpose of permitting others to use it
under agreements for registered user.
Explanation I.
For considering the bona fides of the registration of the trade mark
under clause (2) regard shall be had inter alia to –
(a) whether the goods for which the trade mark is registered are similar
to or are different from the goods in which the registered proprietor has been trading or
dealing before the registration of the mark;
(b) whether the registered proprietor has ever used the mark in question
in relation to his goods in the course of trade before the date of the agreement for
registered user, and if so, the amount and duration of such user;
(c) whether the terms as to royalty and other remuneration payable by
the proposed registered user are reasonable taking into account the expenses which the
registered proprietor is likely to incur in exercising control over the permitted use.
Explanation II.
For considering the bona fides of the acquisition of title under clause
(3) regard shall be had, besides the matters set out in Explanation 1, to the following
further matter, namely, whether the registered proprietor has obtained assignment of other
registered trade marks and if so, whether he has dealt with such other marks by way of
assignment or registered user.
86.)Hearing
before issuing direction to refuse an application or to accept it conditionally.
1.) Before the Central Government decides to direct the Registrar to
refuse an application for registration as registered user or to accept the application
subject to any conditions, restrictions or limitations, it shall give notice thereof in
writing to the applicants through the Registrar. The notice shall state the grounds on
which the Central Government proposes to issue such direction and shall inform the applicants that they are entitled to be
heard.
2.) Unless within two months from the receipt of the notice mentioned in
sub-rule (1) the registered proprietor and the proposed registered user apply for a
hearing through the Registrar, the Central Government may direct the Registrar to refuse
the application or to accept it conditionally, as the case may be.
3.) If the registered proprietor and the proposed registered user apply
for a hearing, the Central Government shall appoint a time for the hearing and shall give
them not less than a month’s notice of the time so appointed.
4.) After hearing the registered proprietor and the proposed registered
user, the Central Government shall decide whether to give direction to the Registrar to
accept the application or to refuse it or to accept it conditionally.
5.) The Registrar shall, on receipt of the directions of the Central
Government, communicate in writing his order on the application to the applicants and to
other registered user of the mark, if any.
87.)Entry in the register.
1.) Where the Central Government directs the Registrar under sub-section (3) of section 49 to accept an application for
registration as registered user, the Registrar shall register the proposed registered user
as registered user in accordance with such directions.
2.) The entry of a registered user in the register shall state the date
on which the application for registration of registered user was made, which date shall be
deemed to be the date of registration as registered user of the person mentioned in the
entry. The entry shall also state, in addition to the particulars and statements mentioned
in clause (ii) of sub-section (1) of section 49, the name, description and principal
place of business in India of the registered user and if he does not carry on business in
India his address for service in India.
87A.)Registration
not to imply authorisation to transmit money outside India.
The registration as registered user of a trade mark, shall not be deemed to imply an
approval of the agreement is so far as it relates to the transmission of any money, as
consideration for the use of the said trade mark, to any place outside India.
88.)Notification
of registration as registered user.
A notification in writing of the registration of a registered user shall be sent by the
Registrar to the registered proprietor of the trade mark, to the registered user and to
every other registered user whose name is entered in relation to the same trade mark and
shall also be inserted in the journal.
89.)Registered
proprietor’s application to vary entry.
An application by the registered proprietor of a trade mark for the variation of the
registration of a registered user of that trade mark under clause (a) of sub-section (1) of section 52 shall be made on form TM – 29 and shall be accompanied by a
statement of the grounds on which it is made, and where the registered user in question
consents, by the written consent of the registered user.
90.)Cancellation
of the registration of registered user.
1.) An application for the cancellation of the registration of a
registered user under clause (b) or clause (c) or clause (d) of sub-section (1) of section 52 shall be made on form TM – 30 or form TM – 31, as the case may be, and shall be
accompanied by a statement of the grounds on which it is made.
2.) In case of the registration of a registered user for a period, in
accordance with sub-clause (d) of sub-section
(1) of section 52 shall be made on form TM – 30 or form TM – 31, as the case may be, and shall be
accompanied by a statement of the grounds on which it is made.
3.) The Registrar shall also cancel every registration made before the
commencement of the Act of a registered user after
the expiration of three years from such commencement.
91.)Power
of the Registrar to require information
for enforcing quality control.
1.) The Registrar may at any time or from time to time require the
registered proprietor or the registered user of a trade mark to furnish him with such information as he may require for satisfying himself
that the stipulations in the agreement between the registered proprietor and the
registered user, regarding the quality of the goods in relation to which the trade mark is
to be used are being enforced or being complied with.
2.) Where any such information
as is referred to in sub-rule (1) is not furnished within the time allowed by the
Registrar, the Registrar may presume that the stipulation in the agreement regarding the
quality of goods is not being enforced, or is not complied with.
92.)Procedure
on application to vary entry or cancel registration.
1.) The Registrar shall notify in writing applications under section 52 to the registered proprietor and each
registered user (not being the applicant in either case) of the trade mark.
2.) Any person notified under sub-rule (1) who intends to intervene in
the proceedings, shall within one month of the receipt of such notification give notice to
the Registrar on form TM – 32 to the effect
and shall send therewith a statement of the grounds of his intervention. The Registrar
shall thereupon serve or cause to be served copies of such notice and statement on the
other parties, namely, the applicant, the registered proprietor, the registered user whose
registration is the subject matter of the proceeding in question and any other registered
user who intervenes.
3.) In the case of any application made under clause (b) of sub-section (1) of section 52 or under sub-clause (i) of clause (c)
or under clause (d) of that sub-section, the
applicant and any person notified under sub-rule (1) may, within such time or times as the
Registrar may appoint, leave evidence in support of his case, and the Registrar after
giving the parties an opportunity of being heard, may accept or refuse the application or
accept it subject to any conditions, amendments, modifications or limitations he may think
right to impose and shall inform the parties in
writing accordingly.
4.) In the case of an application for varying any registration under
clause (a) of sub-section (1) of section 52 or cancelling any registration on any
of the grounds mentioned in sub-clause (ii) or sub-clause (iii) or sub-clause (iv) of
clause (c) of that sub-section, the Registrar
shall forward such application together with any notice on form TM – 32 and statement of case field under
sub-rule (2) to the Central Government and shall dispose of the application as directed by
the Central Government and also inform the
parties in writing accordingly.
93.)Registered
user’s application under section
57(2).
Applications under sub-section (2) of section 57 shall be made on form TM – 16 or form TM – 16 or form TM – 33 or form TM – 34 or form TM – 50 as may be appropriate by a
registered user of a trade mark or by such person as may satisfy the Registrar that he is
entitled to act in the name of a registered user; and the Registrar may require such
evidence by affidavit or otherwise as he may think fit as to the circumstances in which
the application is made.