Friday 27 June 2014

Rectification proceedings under the Trademarks Act, 1999

What is rectification of trademark ?

Rectification means correction or alteration. According to the Trademark Act, 1999 the proprietor or any other person having an interest in the trademark can file an application to rectify certain entries related to the trademark in the register of trademark.

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On what grounds can a registered trademark be removed?

The registered trade mark can be ordered to be removed from the register in view of section 47 of the Act if it is proved that the trade mark was registered without any bonafide intention on the part of the applicant for registration to use the trade mark in relation to the goods or services offered by him and, there has been no bonafide use of the trade mark up to a date three months before the date of application.

Furthermore, if the registered trade mark is not used up to the date of three months before the date of application, or a continuous period of five years or more has elapsed from the date of issuance of the certificate of registration during which there was no bonafide use thereof in relation to the goods and services, the registered trademark becomes liable to be removed from the register. The grounds on which the trademark can be removed are thus provided herein below:

i. That the register suffers from the absence or omission of an entry  e.g. a disclaimer, a condition or a limitation.
ii. That the entry was made without sufficient cause i.e. registration  was obtained by misrepresentation of, facts, similar to earlier mark registered etc.
      iii.   That the mark was wrongly remaining on register i.e. it is contrary   to some provisions of the act or likely to cause confusion.
  iv. That the mark has not been used for a continuous long period of more than five years.
v. That the renewal fee has not been paid.

Who can apply for rectification ?

Any person, aggrieved by an entry wrongly made or wrongly remaining on the register of trademark, is entitled to file a petition for cancellation of registration or rectification of the register for removal of the registered mark. For rectification of register an application should be filed before the trademarks registry, where the application for registration was filed, or before the Appellate Board.

A ‘person aggrieved’ implies any party whose trading interests are affected by the presence of the registration on the register.

What is the Procedure  for rectification?

Step 1 -Application to rectify or remove a trade mark from the register.

An application to the Registrar under Section 47, 57, 68 or 77 for the making, expunging or varying of any entry relating to a trade mark or a collective mark or certification trade mark in the register shall be made in triplicate in Form TM-26, or Form TM-43, as the case may be and shall be accompanied by statement in triplicate setting out fully the nature of the applicant’s interest, the facts upon which he bases his case and the relief which he seeks.

Where the application is made by a person who is not the registered proprietor of the trade mark in question, the application and the statement aforesaid shall also be left at the Trade Marks Registry triplicate. In case there are registered users, such application and statements shall be accompanied by as many copies thereof as there are registered user.

Step 2 -Serving of notices to the registered proprietor by the Trademark Registry

A copy each of the application and statement shall be ordinarily transmitted within one month by the Registrar to the registered proprietor and to each of the registered user and to any other person who appears from the register to have an interest in the trade mark. The application shall be verified in the manner prescribed under Rule 48(e) for verification of a notice of opposition.

Step 3- Filing of the Counter Statement by the registered Proprietor.

Within two months from the receipt by a registered proprietor of the copy of the application mentioned in Rule 92 or within such further period not exceeding one month in the aggregate, he shall send to the Registrar in Form TM-6 a counterstatement in triplicate of the grounds on which the application is contested and if he does so, the Registrar shall serve a copy of the counterstatement on the person making the application within one month of the receipt of the same. The provisions of Rules 50 to 57 shall thereafter apply to the further proceedings on the application.

The Registrar shall not, however, shall not rectify the register or remove the mark from the register merely because the registered proprietor has not filed a counterstatement unless he is satisfied that the delay in filing the counterstatement is willful and is not justified by the circumstance of the case. In any case of doubt any party may apply to the Registrar for directions.

Any person, other than the registered proprietor, alleging interest in the registered trade mark in respect of which an application is made under Rule 92 may apply in Form TM-27 for leave to intervene, stating the nature of his interest, and the Registrar may refuse or grant such leave after hearing (if so required) the parties concerned, upon such conditions and terms including undertakings or conditions as to security for cost as he may deem fit to impose.

Step 4 – Filing of Evidence

Once the CS is filed, the matter reaches the evidence stage and the parties are required to file their respective evidence in the form of an affidavit/s deposed by their concerned authorized officer/s. Subsequent to both the parties having filed their respective evidence, the matter is set down for a final hearing giving both parties opportunity to make oral submissions on merits and the order is made in due course.

Is the Order passed by the Registrar appealable?

Yes, the Order from the Registrar is appealable before the Intellectual Property Appellate Board (IPAB). Appeals can be filed within three months from the date such an Order is communicated.
It is to be noted here that, where cases of an infringement action is pending before any civil court, where the defendant is contesting the validity of the plaintiff’s trademark, the power to hear the rectification application of such trademarks, vests only with the Intellectual Property Appellate Board (IPAB) and not with the registrar.

Case Law on rectification proceeding:

In the case of Kabushiki Kaisha Toshiba (TC) v Toshiba Appliances Co. & ors (32) PTC 243 (Cal) (DB), the appellant petitioner was a company incorporated in Japan selling goods with the trademark, Toshiba. They registered their goods in class 7 goods like electric washing machines; spin dryers, etc., in 1971. The respondent Toshiba Appliances is an Indian company carrying on business in various electrical appliances under the trademark ‘Toshiba’ since 1975. The respondent company had an annual turnover of over Rs. 2 crores in 1989 and had spent substantial amount in advertising their trademark Toshiba.

Sometime in 1989 the appellant company served a legal notice of infringement and passing off in respect of their registered trademark on the respondent company. After receiving this notice the respondent filed an application for rectification and removal of the trademark Toshiba from the register of trademark due to non use. The rectification application was allowed by the registry and the same was confirmed by the single bench of the High Court. Aggrieved by this order the appellant approached the Division Bench. The appellant contended that the trademark Toshiba was registered bonafide to use the mark in relation to the goods. The pleaded that the import policy of the government as it then existed prevented them from importing their class 7 goods but they had joint venture agreements with several Indian companies for VCRs, picture tubes, dry cells, etc.  The main contention raised by the respondent company was that the mark that was registered in 1971 was not used for next 20 years till the rectification application was made, except for a solitary advertisement in 1985.

The Court found that the only instance of the use of the mark since registration was the solitary advertisement in 1985. The question was whether solitary instance of advertisement would amount to ‘use’ to justify the retention of the mark in the register. Relying on M/s J N Nicholas ltd v Rose and Thristle (AIR 1994 Calcutta), the appellants contended that even a single advertisement would amount to use. The Court did not agree. Drawing the rationale from Halsbury’s Law of England, the Court held that the emphasis is on the genuine and commercial use and not on the frequency of use which is not bonafide. Whether the use was genuine must be judged from commercial standards and if the primary purpose of the use was not to sell the products but to validate the registration, then the use is not genuine. Hence whether a trademark is to be prevented from being taken away from the register of trademarks depends upon (i) whether there has been use and (ii) whether such use was bonafide.

The Court held that when a particular trademark is registered and the registered proprietor does not deal with the goods at all, the obvious purpose is to prevent other from dealing with the goods. Therefore it does not become bonafide use of the registered trademark. If a trader seeks to block the register it cannot be held that he has used the trademark in a bonafide manner. Obtaining trademark in such a way as to prevent others who are dealing in the similar classes of goods from trading does not amount to bonafide use.

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