Section 48 of Trademark Act is a vital rule. It lets trademark owners share their marks with others, called registered users, while keeping their rights safe. This section treats use by these users as if the owner used the mark themselves. It is important to understand Section 48 of Trademark Law in India to help clients with licensing plans, avoiding trademark cancellations, and handling disputes. This article explains Section 48 in simple terms, covering its parts, effects, and steps to register as users.
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What is Section 48 of Trademark Act?
Section 48 of Trademark Act, 1999 talks about the registered users. It has two parts that explain how to register users and the legal effects of their use. It works with Section 49 of Trademark Law in India, which covers how to apply for registration.
Sub-Section (1): Registering Users
Sub-Section (1) says anyone besides the trademark owner can register as a "registered user" for some or all goods or services tied to the mark. This lets owners give limited rights to others, like licensees in order to use the mark in certain areas or for specific products. Trademark registration needs a written agreement and must follow Section 49 rules. This process gets recorded in the Trademark Register so that everyone can see it. Section 48(1) part shows the need for clear agreements to avoid fights over how the mark is used.
Sub-Section (2): Use Counts as Owner’s Use
Sub-Section (2) says that when a registered user uses the trademark, it counts as the owner’s use and not someone else’s. This rule applies for laws like Section 47, which deals with removing trademarks for non-use, or other laws where use matters. This protects the trademark from being canceled for not being used, even if the owner doesn’t use it themselves. Instead, the registered user’s actions keep the trademark active. This is helpful when owners license their mark but don’t use it directly.
Connection with Section 47: Protection from Non-Use Removal
Section 48 works closely with Section 47, which allows trademarks to be removed if they’re not used. Under Section 47(1)(a), a mark can be canceled if the owner didn’t plan to use it and hasn’t used it up to three months before a removal request. Section 47(1)(b) targets marks not used for five years after registration. Thanks to Section 48(2), use by a registered user counts as the owner’s use, protecting the mark from these challenges. This encourages owners to license their marks without losing rights. Lawyers often suggest registering users quickly to use this protection, especially for international trade where use might only happen through exports.
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How to Register as a Registered User: Steps for Registration
Section 48 allows registration, but Section 49 explains the steps. The owner and the proposed user must apply together with a written agreement. This agreement should cover things like quality control and what the user can do with the mark. The Registrar of trademark can rejects the registration if the agreement harms the public or if the owner does not have enough control. If approved, the registration to the Trademark Register. Changes in the registration or cancellations follow similar steps. These steps keeps things clear and prevents misuse:
Step 1: Draft a Written Agreement
The proprietor and the proposed registered user must enter into a written agreement specifying the terms of use. This agreement should include:
Scope of Use: Details of the goods or services for which the trademark will be used.
Territory: The geographical area where the user can operate.
Quality Control: Measures to ensure the trademark’s quality and reputation are maintained.
Duration: The period of permitted use.
Royalty or Compensation: Financial terms, if applicable.
Termination Clauses: Conditions under which the agreement can be terminated.
This agreement is critical, as the Registrar will review it to ensure it aligns with public interest and trademark law.
Step 2: Prepare the Application (Form TM-U)
The application for registration as a registered user must be filed using Form TM-U, as prescribed under the Trademark Rules, 2017 (Rule 80). Key requirements include:
Joint Application: Both the registered proprietor and the proposed user must jointly file the application.
Details Required: Name, address and description of the proprietor and proposed user. Details of the registered trademark (e.g., registration number, class, and goods/services). And, particulars of the agreement, including conditions or restrictions on use.
Supporting Documents: A copy of the written agreement, An affidavit by the proprietor (or authorized agent) verifying the proposed user’s particulars, degree of control, and conditions of use. And, Any additional documents the Registrar may request, such as proof of the user’s identity or business credentials.
Step 3: Submit the Application to the Registrar
The Form TM-U, along with the prescribed fee (as per the First Schedule of the Trademark Rules, 2017), must be submitted to the Registrar of Trademarks. Submission can be made:
Online: Through the e-filing portal of Indian Patent Office (preferred for efficiency).
Physically: At the appropriate Trademark Registry office, depending on the jurisdiction.
Ensure all details are accurate to avoid objections or delays.
Step 4: Registrar’s Review and Inquiry
Upon receiving the application, the Registrar reviews it under Section 49(2) in order to ensure compliance with the Trademarks Act. The Registrar may:
Verify that the agreement ensures sufficient control by the proprietor over the trademark’s use.
Assess whether the arrangement is contrary to public interest (e.g., misleading use or lack of quality control).
Conduct an inquiry or request additional information/documents if needed.
The Registrar has the discretion to refuse registration if the application does not meet legal standards or if public interest is at risk.
Step 5: Advertisement and Opposition
If the Registrar is satisfied, the application may be advertised in the Trade Marks Journal to allow public scrutiny. During this period:
Third parties can file oppositions if they believe the registration harms their interests.
The Registrar will hear any oppositions and decide accordingly, following procedures under Rule 82 of the Trademark Rules, 2017.
Step 6: Registration and Entry in the Trademark Register
Once approved (and if no opposition is upheld), the Registrar enters the proposed user as a registered user in the Trademark Register. The entry includes:
Name and details of the registered user.
Conditions or restrictions specified in the agreement.
Effective date of registration.
The Registrar issues a certificate of registration to confirm the status, formalizing the user’s rights to use the trademark as per the agreement.
Step 7: Variation or Cancellation (If Applicable)
After registration, any changes to the agreement (e.g., extending the scope or duration) or cancellation of the registered user status must be applied for under Section 49(4). This requires:
A joint application by the proprietor and registered user (Form TM-U).
Supporting documents, such as an amended agreement or termination notice.
Payment of applicable fees.
The Registrar follows a similar review process, including advertisement if necessary, before updating the Register.
Difference Between Registered Users and Permitted Users
People often mix up registered users and permitted users. The following table shows why registering under Section 48 of Trademark Act is better for stronger legal protection:
Aspect | Registered User | Permitted User |
Definition | A person registered under Section 48 with a formal application and agreement. | Any user allowed to use the mark, not always registered, as per Section 2(1)(r). |
Legal Effect | Use counts as the owner’s use under Section 48(2); helps in disputes. | Use may count as the owner’s if proven, but lacks formal registration benefits. |
Registration Required | Yes, needs a joint application to the Registrar. | No, can be based on oral or written agreement, but registration is better. |
Protection Against Non-Use | Strong, as registration uses Section 48(2). | Weaker, needs proof of permission; sub-licensing is debated. |
Public Record | Listed in the Trademark Register. | Not recorded unless registered. |
Summary
Section 48 of Trademark Act, 1999, is a smart rule that lets trademark owners license their marks safely while counting the user’s actions as their own. It works with Sections 47 and 49 to prevent cancellations and support business growth. Understanding Section 48 helps the owner to protect and use their trademarks well. As businesses grow, Section 48 stays relevant by encouraging careful agreements and timely registration. This provision protects intellectual property and supports innovation and competition in India.
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Section 48 of Trademark Act: FAQs
Q1. What is Section 48 of Trademark Act?
Section 48 allows a registered trademark owner to permit others to use their mark as registered users, with such use counted as the owner's use to protect the trademark.
Q2. What is Rule 48 of the Trademark Rules 2017?
Rule 48 outlines the process for applying to register a trademark, including details like application format and required documents.
Q3. What is a TM 48 Form of Authorization?
TM 48 is a form used to appoint an agent or attorney to act on behalf of a trademark applicant or owner for filings and proceedings.
Q4. What is the licensing of trademark Section 48 to 53?
Sections 48 to 53 govern trademark licensing, allowing registered users to use the mark under controlled agreements, ensuring owner rights and proper use.
Q5. What is Rule 53 of the Trademark Rules?
Rule 53 details the procedure for recording a registered user in the Trademark Register, including application and agreement requirements.
