WITHDRAWAL OF ACCEPTANCE

INTRODUCTION

Trademark withdrawal is a crucial aspect of the Trademarks Act, 1999, which serves as the cornerstone of trademark law in India, ensuring the protection of intellectual property rights. A trademark refers to any word, phrase, symbol, design, or combination thereof used to identify and distinguish the goods or services from one another. According to Section 2(1)(zb) of the Act, a trademark must be graphically represented and capable of distinguishing the goods or services of one party from others. This includes shapes, packaging, and combinations of colours.

In India, trademarks are registered and protected under the Trademarks Act, 1999. The registration process involves several stages like application filing, examination, publication, and registration. As per Section 18, individuals or partners may apply for trademark registration through the Trade Marks Registry within the jurisdiction of their principal place of business.

However, during this process, the Registrar may find grounds for refusal or may apply conditions for acceptance, leading to amendments or modifications in the application. Section 19 addresses such situations by empowering the Registrar to withdraw the acceptance of an application before the trademark is officially registered. This may occur if the acceptance was made in error or if new circumstances require additional conditions, limitations, or outright refusal.

TMWALA, with its expertise in intellectual property law, can assist clients in navigating this complex process, ensuring compliance with the legal requirements for both voluntary and involuntary withdrawal.

UNDERSTANDING TRADEMARK WITHDRAWAL

The process by which a person cancels their trademark application prior to its official approval is known as trademark withdrawal. In India, trademarks may be withdrawn voluntarily or in response to specific circumstances, as explained below:

• Voluntary Withdrawal

In order for the Registrar to mark a trademark as “withdrawn” in the Indian Trademark Registry, applicants who wish to withdraw their applications can do so electronically.

TMWALA can guide applicants through the withdrawal process, ensuring that all necessary forms are correctly filed, and legal requirements are met.

• Withdrawal Following Rejection

The applicant may withdraw their trademark application if the Hearing Officer or Trademark Officer rejects it. This withdrawal has no further consequences and is regarded as if the application had never been submitted.

Legal experts at TMWALA can advise on the potential implications of withdrawal and assist in preparing for appeal.

SECTION 19 OF THE TRADE MARKS ACT, 1999:

Section 19 enables the Registrar to withdraw the acceptance of an application if it was accepted:

• In error or
• Without giving due regard to the situations in which the trademark shouldn’t have been approved or
• Without putting the required limits, limitations, or conditions.

After speaking with the applicant, the registrar has the option to revoke the acceptance and act as though the application had never been approved.

REQUIRED FORMS FOR INITIATING TRADEMARK WITHDRAWAL

• Form TM-O: Used in trademark withdrawal cases that fit the criteria listed in Trademark Act sections 47 and 57. When non-use or other circumstances listed in these sections are the basis for withdrawal, this form is selected.
• Form TM-U: This form is only utilized in situations involving withdrawals that meet the requirements outlined in Section 50 of the Trademark Act. It applies when the withdrawal is made for grounds pertaining to a registered trademark’s cancellation or alteration.

For businesses facing the withdrawal process, TMWALA provides expert advice on the appropriate form and the steps to ensure timely and proper submission.

INITIATION OF WITHDRAWAL

The withdrawal process typically begins with an office action, as outlined below:

1. Identification of Error:The concerned officer certifies that the trademark application was approved, especially the officer in charge of PRAS (Pre-registration Action System) or EPR (Examination of Proprietary Rights):
   • In error.
   • With inappropriate restrictions or constraints.
   • As a result of errors in data entry (e.g., inaccurate classification, goods/services specification, or trademark representation).
   • For trademarks that are forbidden or not registrable (such as trademarks that resemble International Non-Proprietary Names for pharmaceuticals).
2. Proposal for Withdrawal: The Registrar of Trademarks, the Controller General of Patents, Designs, and Trade Marks (CGPDTM), receives a note suggesting the withdrawal of acceptance.
3. Referral to the Show Cause Hearing Section:Following approval by the CGPDTM, the application is sent for Show Cause Hearing, which, in accordance with Rule 42 of the Trade Marks Rules, 2017, starts the formal withdrawal procedure.

WITHDRAWAL PROCESS

The following is the detailed process for withdrawing acceptance in accordance with Section 19 and Rule 38:

• Issuance of Notice:The applicant receives a notice outlining the grounds for withdrawal or change of acceptance as well as the Registrar’s concerns.
• Response from the Applicant:The notice has 30 days for the applicant to reply. The applicant might:
  • Amend the application to comply with the Registrar’s requirements.
  • Apply for a hearing.
  • Withdraw the application voluntarily.
• Deemed Withdrawal: The acceptance is considered withdrawn, and the application returns to the pre-acceptance stage if the applicant does not reply within the allotted 30 days.
• Hearing Process: The Registrar sets up a hearing if the applicant seeks one. The applicant has two options for presenting their case: in person at the hearing or in writing.
• Registrar’s Decision: The Registrar has the following options after examining the applicant’s materials:
  • Refuse to accept the application.
  • Put additional restrictions or requirements on the application.
  • Permit the application to move forward with the required changes.
• Implementation of the Decision:The application moves forward in accordance with the decision’s implementation. The procedure proceeds as if the application had not been accepted in the first place if approval is revoked.

EFFECTS OF TRADEMARK WITHDRAWAL

The rights of the trademark proprietor and the trademark’s accessibility to third parties are significantly impacted when a trademark is withdrawn.:

• Loss of Trademark Claims: Any prior legal claims or rights that the trademark proprietor may have had over the mark are essentially nullified by the withdrawal. As a result, the trademark returns to the public domain, where it can be registered and used by anybody.
• Status Update in Trademarks Registry: When a trademark application is withdrawn, the official records are immediately updated. The application status will be updated to “withdrawn,” indicating the official end of the application process, on the Indian Trademarks Registry’s digital platform to reflect this change.
• Restrictions on Trademark Use: The original owner loses all usage rights to the trademark after it is withdrawn. Since the trademark’s revocation deprives it of any protective rights, they are no longer permitted to lawfully use it in commerce or claim any exclusive rights thereto.

CONCLUSION

In order to preserve the validity and correctness of the Indian trademark registration system, trademark withdrawal under the Trademarks Act, 1999, is essential. The withdrawal procedure guarantees that only marks that satisfy all legal requirements are given protection, regardless of whether it is started voluntarily by the applicant or in response to regulatory investigation under Section 19.

The law offers a vital precaution against misuse and incorrect registration by giving the Registrar the authority to review and cancel licenses given incorrectly or under incomplete evaluations. Natural justice principles are upheld while regulatory diligence is reinforced by the structured procedure, which includes hearings, show cause notices, and opportunity for applicant response.

In the end, the withdrawal procedure safeguards the public interest, maintains the integrity of the trademarks registry, and guarantees that only truly legitimate and distinctive marks are granted intellectual property rights.

Throughout the trademark withdrawal procedure,TMWALA may aid clients by offering legal advice, guiding them through the nuances of trademark law, and making sure their rights are completely upheld.