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.

TRADEMARK REGISTRATION IN INDIA - The Process

A trademark can be described as a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service arises of one provider with that of other service providers.

The term “trademark” is often used to refer to both trademarks and service marks. Any distinctive design, graphics, logo, symbols, words, or any combination thereof that uniquely identifies a firm and/or its goods or services, guarantees the item's genuineness, and gives the owner  legal rights to prevent the trademark's unauthorized use, would be a good trademark or service mark , respectively with regard to the good or services. A trademark must be, distinctive instead of descriptive, affixed to the item sold, and registered with the appropriate authority to obtain legal ownership and protection rights.

Now the question arises as to what constitutes a distinctive trademark and a descriptive trademark? 

As some people know, trademarks can be classified in a whole spectrum of trademark distinctiveness categories. Distinctive trademarks would be any fanciful, arbitrary marks which have been invented for the sole purpose of functioning as a trademark and have no other meaning or than acting as a mark or even having a common meaning which has no relation to the goods or services being sold. Examples for fanciful and arbitrary marks include: Exxon, Kodak, Xerox and Apple (for computers), Lotus (for softwares).

Descriptive trademarks on the other hand are any marks that merely describe the goods or services used in connection with that mark. Descriptive trademarks are not entitled to trademark protection.  Some examples of descriptive trademarks include:  If someone called a store that sold electronics, Electronics Land, it would likely be deemed descriptive.  Similarly, an optics store known as Vision Center would also be deemed merely descriptive and not entitled to exclusive trademark protection.  However, just because a mark is deemed descriptive, does not mean that it is entirely void of any protection in the future. If with considerable stretch of time the applicant is able to show that the mark has acquired distinctiveness, meaning that through use over a certain amount of time the consuming public has come to realize that the mark identifies the source of those goods or services rather than merely describes the goods or services used in connection with that mark, such trademark then, becomes entitled to protection under the Act, 1999.Example of such a trademark would be Windows for windows software, Sharp for Televisions & Digital for computers.

It is not mandatory for the purpose of law, that the trademark or the service mark shall be registered but, registration of the mark gives authoritative ownership over the registered trademark; authoritative and exclusive commercial or professional uses of the trademark; security and protection of the trademark; hiring and trading of the trademark with any national and foreign person or company; and selling of the registered trademark.

source : www.prodality.com/part-3-understanding-trademarks/

Types of Trademarks that can be registered:

As per the provisions of the Trade Marks Act 1999, following are the types of trademarks that can be registered in India:

     ● Product trademarks associated with particular good(s).

 ● Service trademarks associated with a particular kind of service such as insurance, building construction etc.

The Fourth Schedule of Trade Mark Rules, 2002 provides a comprehensive classification of the different types of trademarks associated with different goods and services that can be registered in India. The Trademark Act of India can be accessed here.

Duration of Trademark protection available in India

·        Term of registration of a trademark is ten years, which may be renewed for a further period of ten years on payment of prescribed renewal fees.

·        However, non-usage of a registered trademark for a continuous period of five years is a valid ground for cancellation of registration of such trademark at the behest of any aggrieved party.

The Procedure

Step 1: Making the trademark application

Trademark application can be filed for single or multi class. Applications claiming priority from some convention country can also be filed in India within six months from the priority date. The trademark application i.e. Form- TM 1 is to be filled and filed along with requisite government fees of INR 3500 and is a one time fee.

Along with the application, the under mentioned documents are also to be filed:

·        Proprietorship concern: Full name and address of the proprietor and true copy of identity and address proof.

·        Partnership concern: Full name and address of all partners and true copy of related documents.

·        Company concern: full name and address of all directors and true copy of related documents.

·        If one has claimed that the proposed mark has been in use before application in another country, then evidence for such claim has to be provided.

·        An image of the brand logo in a standard size of 9 x 5 cms

Every application for registration of a trade mark shall be usually made in triplicate and shall be accompanied by five additional representations of the mark. The representations of the mark on the application and each of its copies and the additional representations shall correspond exactly with one another.

Step 2: Filling of the registration application

There are 2 ways to file the registration – manual filing or e-filling.

In case of manual filing, the appropriate trademark offices (either of Mumbai, Delhi, Kolkata, Chennai and Ahmedabad) are to be approached directly by the applicant, with the application form, supporting documents and the requisite fees. Receipt of acknowledgement of the application is usually received within 15-20 days of the filing.

An “appropriate office” of the Registry for this purpose would mean, within whose territorial limits, the principal place of business in India of the applicant is situate. In the case of joint applicants, the principal place of business in India of the applicant will be that of the person whose name is first mentioned as having a place of business. If the applicant has no principal place of business in India, he should file the application at that office within whose territorial jurisdiction, the address for service in India given by him is located. No change in the principal place of business in India or in the address for service in India shall affect the jurisdiction of the appropriate office once entered.

In e-filing system, the acknowledgement of the application is issued immediately. And after receipt of the acknowledgement, the (TM) symbol next to the brand name can be used.

Step 3: Examining the brand name registration application

After receiving the application, an examination is conducted by the registrar in respect of the distinctiveness, possibility of deceptiveness and conflicting trademarks. If an objection to registration is raised, an official examination report is will be issued by the registrar within three months to one year, depending upon the back log at the registry office. The registrar may accept or refuse the application subject to the provisions of the Trademark Act, 1999. An application can be objected or refused by the registrar on relative or absolute grounds.

A hearing is given to the applicant to explain why the objections raised by the Registry are not applicable in their case. If satisfied by the reasoning of the applicant, the application moves to the next stage.

Step 4: Advertisement in the Indian Trade Mark Journals

After examination and upon acceptance of the response by the registrar, the logo or brand name is advertised or published in the Indian Trade Mark Journal. It is published so as to invite the public for filing opposition as to the registration of the trademark. 

Step 5: Opposition

Upon publication of the trademark in the trademark journal, any person can oppose the registration of the said trademark by filing a notice of opposition within the prescribed time limit of three months from the date of publication of the said trademark in the trademark journal. The time period for filing the notice of opposition can be extended by a maximum period of one month, by filing a specified request for extension of time, along with the requisite fees to the registrar, within the statutory time period of three months. 

Step 6: Registration

The application shall proceed to registration where there is no opposition or in case of any opposition, it has been decided in favor of the trademark applicant. The mark is then registered for a period of 10 years from the date of the filing of the application and the certificate of registration is issued.

Step 7: Renewal

The trademark can be renewed from time to time for an unlimited period, by payment of the requisite renewal fees, failing which the mark becomes liable to be removed from the trademark register, due to non renewal of the same. Each renewal is for ten years.

The procedural forms for major trademark prosecution transactions

The First Schedule to the Trademark Rules, 2002 prescribes the different procedural forms and necessary amounts of fees required for all trademark-related transactions, of which some examples have been given below:

·        For filing new applications- There are prescribed forms depending on the nature of application such as Form TM-1, TM-2, TM-3, TM-8, and TM-51 etc.

·        To file a Notice of Opposition to oppose an application published in the Trade Marks Journal- (Form TM-5).

·        For Renewal of a Registered Trademark-(Form TM-12).

·        Surcharge for belated renewal - (Form -10)

·        Restoration of removed mark - (Form TM-13)

·        Application for rectification of a registered trade mark - (Form TM-26)

·        Legal Certificate - (Form TM-46)

·        Official search request for trademark - (Form TM-54)

·        Preliminary advice of the Registrar as to the registrability of a mark - (Form TM-55).

·        Copyright search request and issuance of certificate - (Form TM-60)

Approximate total cost involved in Trademark Registration

The total cost involved in a trademark registration depends upon the number of trademarks one registers, the number of classes in which he seeks registration, the opposition processes, the amount of lawyer’s fees for consultation and filing of applications. However, the Government fees prescribed for registration of a trademark is INR 3500 and INR 5000 for application of renewal of the trademark for another stretch of 10 years, both not inclusive of any of the above particulars.