INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
explained in 5.4 Opposition or Revocation/Cancella- tion Procedure – amendment to limit the specification could be directed. 5.7 Combining Revocation/Cancellation and Infringement Under Section 124 of the Trade Marks Act 1999, the defendant in an infringement suit can seek a stay of the infringement proceedings. In order to obtain a stay, the defendant must contest the registration of the mark that is the subject of infringement proceed - ings. 5.8 Measures to Address Fraud If any trade mark is registered without any sufficient cause (ie, if registration was obtained by fraud or mis - representation of facts or the mark registered is similar to an already registered trade mark), then cancellation proceedings can be initiated for the impugned mark under Section 57 of the Trade Marks Act 1999. The Trade Marks Act 1999 states that if the validity of an assignment is disputed, the TMO has the authority to refuse to register the assignment until the parties’ rights are established by a competent court. The assignment or transmission where multiple exclu - sive rights would be created in more than one per - son is restricted, as is the separation of rights on a territorial basis and the creation of rights in various individuals in different parts of India. The TMO, on the other hand, has the authority to allow assignment if it is considered to be in the public interest. 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Where there is an assignment without goodwill of business, it will not take effect unless the assignor obtains directions from the TMO and advertises the assignment as per directions. Furthermore, certifica - tion trade marks can only be assigned subject to con - sent of the TMO. Before recording an assignment that involves the transmission of money outside India, the consent of
rights in a trade mark or any like reason. Hence, in a revocation/cancellation petition, the person aggrieved needs to file a statement of case establishing the rea - son behind the petition. 5.4 Opposition or Revocation/Cancellation Procedure Opposition Procedure Once a notice of opposition is filed, the procedure is as follows: • the TMO will serve a copy of the notice of opposi - tion to the applicant; • following the service of the notice of opposition, the applicant is given two months to file a counter - statement outlining its position in order to over - come the grounds of opposition; • the applicant’s trade mark is deemed abandoned for non-prosecution if it fails to file a counterstate - ment within two months of receiving the opposi - tion; • alternatively, after filing of the counterstatement, the opposition will proceed to the evidence stage; and • upon completion of the evidence stage, a hear - ing notice date is generated and, after hearing the parties and considering the evidence, the TMO then gives its verdict on whether the trade mark is An application for revocation/cancellation of a regis - tered trade mark can be filed before the TMO or the Intellectual Property Division in the prescribed manner and with the requisite fee. 5.5 Legal Remedies Against the Decision of the Trade Mark Office If either of the parties is not satisfied with the TMO’s decision in opposition proceedings, then the decision can be challenged by filing an appeal before the Intel - lectual Property Division. 5.6 Amendment in Revocation/Cancellation Proceedings There is no explicit provision for amendment given in revocation/cancellation proceedings. However, in case of a partial revocation/cancellation petition – as accepted for registration or refused. Revocation/Cancellation Procedure
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