Section 19 of Trademark Act 1999 allows the Registrar to cancel the acceptance of a trademark application before it’s fully registered. This section acts as a safeguard to ensure only valid trademarks make it to the register. It sits between Section 18 which deals with applying for a trademark, and Section 20, which covers advertising the application. Section 19 gives the Registrar the power to fix mistakes or address new issues that make a trademark unsuitable for registration. Before taking action, the Registrar must give the applicant a chance to explain their side. This process helps keep the trademark register accurate by preventing ineligible marks from being registered.
Step into the future of legal expertise! Join our Advanced Certification Program in Intellectual Property Law, created by The Legal School in collaboration with Khaitan & Co. Designed for fresh law graduates and professionals, this unique course boosts your legal career. Don’t miss this opportunity—enquire today to secure your spot!
What is Section 19 of the Trade Marks Act?
Section 19 is part of Chapter III in the Trade Marks Act, 1999, which outlines the steps for registering a trademark. It comes between Section 18 (applying for a trademark) and Section 20 (advertising the trademark). It serves as a checkpoint to ensure only proper trademarks move forward to registration.
This section allows the Registrar to “withdraw the acceptance” of a trademark application if certain conditions are met. In simple terms, if the Registrar accepts an application but later finds a problem, they can undo the acceptance. The application then goes back to being treated as if it was never accepted.
Section 19 ensures only trademarks that meet legal standards get registered. It is a form of trademark correction because it fixes errors in the application process before the trademark is finalized.
Section 23 which covers registration says that the Registrar must register a mark if it’s accepted and not opposed, but only if Section 19 doesn’t apply. This shows that Section 19 can stop an accepted application from moving forward.
Registrar’s Powers under Section 19
Section 19 gives the Registrar of Trademarks the authority to act after accepting an application but before registering the trademark. The Registrar can withdraw acceptance in two main cases:
Accepted by Mistake: The Registrar realizes the application was accepted in error. For example, they might have missed a reason to refuse the trademark, like it being too similar to another mark or not distinctive enough.
Unregistrable as Accepted: The Registrar decides the trademark shouldn’t be registered at all, or only with different conditions than originally accepted. This might happen if new information shows the mark isn’t unique or conflicts with an existing trademark.
Before withdrawing acceptance, the Registrar must give the applicant a chance to respond. After the hearing, if the Registrar still believes the mark shouldn’t proceed, they can withdraw the acceptance. The application then goes back to the pre-acceptance stage, as if it was never approved.
Key points about the Registrar’s powers:
The Registrar uses this power only in specific cases, like errors or unregistrable marks.
The Registrar must follow fair procedures, including notifying the applicant and holding a hearing.
After withdrawal, the application may need re-examination, amendments, or could even be rejected completely.
Know How to Name a Trademark in India.
Significance and Practical Application of Section 19
Section 19 works like a safety net in the trademark registration process. It ensures only valid trademarks get registered by allowing the Registrar to fix mistakes made during acceptance. If the Registrar or an examiner finds a problem after accepting a mark, Section 19 lets them correct it before the mark is finalized.
Here’s how the process usually works:
Notice: The Registrar informs the applicant that they plan to withdraw acceptance and explains why.
Hearing: The applicant gets a chance to respond, either in writing or at a hearing. This step is required before any final decision.
Withdrawal Order: If the Registrar of Trademarks still believes the mark shouldn’t proceed, they issue an order to withdraw acceptance.
After this order, the application is treated as if it was never accepted. It goes back to the examination stage where the Registrar might review it again or reject it if it does not meet the criteria. Section 19 is often compared to a correction process because it fixes errors before a trademark is added to the register. This helps keep the trademark register accurate and reliable.
For example, if a trademark was accepted but later found to be too generic or similar to a well-known trademark, Section 19 allows the Registrar to step in. Unlike regular examination, Section 19 applies only after acceptance but before registration. If the acceptance is withdrawn, applicants can still try to fix the issue, reapply, or appeal to a higher authority, though appeals are handled outside this section.
Know about the Trademark Registration Cost in India.
Impact on Trademark Owners and Applicants
Section 19 can significantly affect trademark applicants. If the Registrar withdraws acceptance, the trademark would not proceed to registration until the issues are resolved which can impact applicants in several ways:
Delays in Registration: Withdrawing acceptance pauses the registration process. Applicants may need to address the Registrar’s concerns, which could mean going through examination again. This keeps the registration on hold until resolved.
Extra Effort and Costs: Applicants might need to submit new arguments, evidence, or revise their application. This can lead to additional legal fees or time spent preparing responses. In some cases, applicants can amend their application under Section 22 but that’s a separate process.
Risk of Rejection: If the Registrar’s concerns aren’t addressed, the application could be refused. This means the applicant might lose their chance to register the trademark if it doesn’t meet the legal standards.
Summary
Section 19 of the Trade Marks Act, 1999, grants the Registrar to cancel the acceptance of a trademark application if it was accepted by mistake or doesn’t meet legal standards. The Registrar must notify the applicant and give them a chance to respond before deciding. This section acts like a correction tool to ensure only valid trademarks are registered. By understanding Section 19, trademark professionals can better guide applicants to keep their applications strong and know what to do if the Registrar raises concerns.
Related Posts:
Section 19 of the Trade Marks Act: FAQs
Q1. What is Section 20 of the Trade Marks Act?
Section 20 lets the Registrar advertise a trademark application so others can oppose it.
Q2. What is the time limit for trademark objection?
You have four months from the advertisement date to file an opposition to a trademark.
Q3. What are the four types of trademarks?
The four types are product marks, service marks, collective marks, and certification marks.
Q4. What is Section 18 of the Trade Marks Act?
Section 18 allows the Registrar to accept or refuse a trademark application after reviewing it.
Q5. What is Rule 19 of the Trade Marks Act?
Rule 19 explains how to correct errors or amend a trademark application.
