Rectification of Trademark in India
Introduction
This article is written by Anshumi Maloo, a student at Karnavati University. This article includes the procedure and grounds for the Rectification of the Trademark in India.
A mark as per Section 2(m)[1] of the Indian Trademarks law, includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colors or any combination.
A trademark as per Section 2(zb)[2] means “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors”
Types of Trademark:
Any trademark that has a coined word or term is considered a fanciful trademark and is typically the most easily registered trademark. E.g. -BATA.
Arbitrary mark- An arbitrary mark is a mark that is a widely used term but does not have a relation to the products/services for which it is used. E.g.: Apple
A suggestive marks-A suggestive mark is a mark that is merely suggestive of the products/services, in a remote way, and often involves a certain amount of creativity on the part of the public to distinguish such ties. Ex: Google, Microsoft
A descriptive marks-A descriptive mark is a mark identifying the characteristics of the products/services in question. Quality, quantity, the descriptive part could be like Nirma as detergent.
Genericised Trademarks-These is trademarks that have been exclusive trademarks and have become public Juris(generic) over time. E.g.: Xerox[3]
Trademark Protection and Enforcement
In addition to giving the applicant exclusive rights to use the mark, trademark protection also forbids any improper and unauthorized use of the mark by any third party. The trademark applicant can therefore enforce his/her trademark rights against infringers through an infringement suit and/or a transfer suit.
Rectification
Where an aggrieved person is entitled to file a petition for the revocation of the registration or the rectification of the registration for the withdrawal of the registered mark if the registration is improperly created or wrongly remaining in the registry of the trademark. Rectification of the registry is a proceeding in which a party requests the removal from the register of a registered trademark.[4]
Rectification is the legal process for fixing or correcting a mistake or omission made in the details of a trademark as reported in the registry of trademarks following registration of the trademark. A mark may have been incorrectly registered or, even after its expiry, may have stayed on the register. In these cases, the Indian Trademark Act provides for the correction of the registered trademark.
An application can be filed before the Trademark Registry (in the relevant trademark jurisdiction, i.e., Mumbai, Ahmedabad for the rectification or cancellation of the trademark, where the application for registration of the trademark was originally filed.
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Who can file
1] That he/she itself is affected,
2] Proper evidence demonstrating that the mark was not used by the trademark owner must be presented by the “aggrieved person” in the course of proceedings.[5]
Only an aggrieved party is allowed to file an application for the register to be rectified on the ground that the trade has not been used. The act has not established an exhaustive description of the aggrieved person, but the meaning can be interpreted by the court’s decision.
It means a person who is substantially involved in removing the mark from the register in order to gain its benefit, or who, if the mark remains in the register, will be substantially affected. The meaning involves a person who strongly believes that such registration or someone who has previously applied for registration of the same mark is detrimental to his interest and his registration is pending.
Section 47[6] of the Trademarks Act in India sets out two circumstances relating to the termination of a registered trademark:
- We come across applications that have been filed in all the 45 classes as part of trademark searches that we perform before filing, while the mark is only used by one or two classes only. This is called defensive registration and the court has held that such registrations should not be encouraged in different cases.[7]
Therefore, if an individual proves that the claimant has no intention of actually using the mark with regard to the goods and services in respect of which the mark has been filed, a request for cancellation can be filed with a view to withdrawing the mark from the register of trade.
If, for a continuous duration of 5 years from the date of registration of the mark and three months prior to the filing of the application for registration, the mark has not been used. In fact, if the mark has not been used for a period of 5 years and 3 months, any aggrieved individual may lodge a request for a correction of the registration for the removal from the trade registry of the registered mark.
In the present case, even though an initial use of the mark has occurred, if the mark has not been used for a continuous period of 5 years after registration of the mark, it is possible to file an application for rectification. Where a mark has been incorrectly registered or may have stayed on the register even after its expiry, an application for rectification of a registered mark may also be filed.[8]
In the case of Hindustan Unilever Limited v M/s Three-N-Products (P) Ltd, the court in a rectification petition, the Intellectual Property Appeal Board (IPAB) requested to the defendant that the AYUR trademark, which had been on the Trademarks Registry for 25 years, be withdrawn from the register on the basis that AYUR is a generic concept that cannot be monopolized.
In deciding on the petition, the IPAB took the view that the AYUR mark had been questioned in many opposition proceedings.
Grounds For Rectification of Trademark in India
Section 57 of the Trademark Act, 1999 provides the Grounds for Rectification of the registered trademark. An application for rectification or cancellation of a trademark can also be filed.
The Indian Trademark Act provides for rectification/cancellation proceedings. Broadly, the grounds available are as follows;
- The mark was not distinctive at the time of its registration.
- The trademark is in competition with an already established trademark.
- It is possible that the use of the mark would cause company and public misunderstanding and deception.
- There is no bona fide intention to use the mark.
- For a period of 5 years, there was no use of the mark.
- Make any changes, updates, or modifications to any registered trademark in compliance with the latest development.
- Non-renewal of the trademark’s original or previous registration.
- If registration is gained by deception, a trademark may be expunged from the registry. In particular, if the registration has been obtained by eliminating the material fact or false declaration, it is known as registration obtained by fraud.
- Inclusion or inclusion of a certain number of classes of products or services, whether that class is contrary to the commercial reach of the registered trademark.
- Non-compliance with one or more of the grounds set out in the 1999 Indian Trade Marks Act, Section 9 and Section 11.[9]
Application for Non-use of Trademark
Such an application shall be lodged if the trademark has not been used for more than five years and three months and, in such a case, the proprietor may forfeit his right to the registered trademark if he is unable to convince the court that the basis of application is unreasonable and that the trademark has been used continuously on or after registration thereof.
If the owner of the TM fails to decide the registrar’s use of the mark, the Registry of IPAB would remove the mark.[10]
Procedure for Rectification
On receipt, along with the specified fees and statement of fact, of full requests for rectification of the register.[11] The registrar shall submit a copy of the application along with a statement of facts to the proprietor of the trademark registry, requesting him to file his counter statement in support of his statement.
Upon completion of the registered proprietor’s filing of the counter-argument, the Registrar demands all parties to submit their evidence. On the presentation of evidence, the matter is scheduled for a final hearing by giving both parties an equal opportunity to make oral representations if necessary, on merits, and the final order is passed by the Registrar.
In the case of Patel Field Marshal Agencies and ANR. Vs. P.M. Diesels Ltd. and Ors[12] the issue before the court was Where a suit for infringement is pending wherein the issue of the validity of the registration of the trade mark in question has been raised either by the plaintiff or the defendant and no issue on the said question of validity has been framed in the suit
or if framed has not been pursued by the concerned party in the suit by filing an application to the High Court for rectification under Sections 111 read with Section 107 of the Trade and Merchandise Marks Act, 1958, whether recourse to the remedy of rectification under Sections 46/56 of the 1958 Act would still be available to contest the validity of the registration of the Trademark.
The court held that that Section 111[13] of the Act of 1958 (corresponds to Section 124[14] of the Act of 1999) which deals with the ‘stay of proceedings where the validity of the registration of the trademark is called into question’ provides, in particular,
If the registration proceedings relating to the trademark are pending before the Registrar or the High Court, either the complainant or the defendant, as may be, and a complaint is pending before the Registrar or the High Court, as may be, where the aforementioned plea is raised either by the defendant or by the claimant, a suit for infringement is brought, the suit shall remain stayed.
Section 111 of the 1958 Act cannot be interpreted to ascertain the true meaning, intent, and effect of the provisions found therein in such a way that Section 111 applies only to the stay of proceedings where the validity of the registration of the trademark is called into question.[15]
In the case of Nestle v. Shree Shankeshwar Utensils[16] in which, while discussing Section 124 in the context of the Patel Field Marshal case, the Court held that a party to a trademark infringement lawsuit is not allowed by the Court to initiate rectification proceedings before the IPAB.
On the other hand, in Abbott v. Raj Kumar[17], the question was, inter alia, whether the mere plea of invalidity would be appropriate for the Court to invoke Section 124 in the light of the Patel Field Marshal Case in the case of Abbott v. Raj Kumar if the rectification of a trademark was not pending before the Intellectual Property Appellate Board (IPAB).
It is very important that in cases such as Abbott where the stay of the lawsuit was granted for seeking invalidation against the defendant’s mark after having secured an interim injunction order if the plaintiff were to lose the case, the courts must remain aware of giving strict timelines to avoid possible injustice to a defendant.
In the case of Country Inn v. Country Inns and Suites[18] in which there is an objective and exhaustive Patel Field Marshal review, Delhi High Court.
Notably, this decision does not answer either the case of Abbott or the case of Nestle before the same court. In this case, after several years of filing the litigation and trial, the defendants filed an interim application for framing of the question of invalidity and stay of trial under Section 124. The present case is a decision in favor of the same interim order.
These cases, particularly the Country Inn case, also raise an important point that it is almost compulsory for any defendant in the post ‘Patel Field Marshal era’ to at least attempt an invalidity complaint against the complainant (and/or vice versa) because any subsequent rectification/cancellation during the pendency of the suit would not be permissible once problems are framed and trial begins.[19]
The courts have also acknowledged that, without actual use in India, a trademark will achieve prestige or goodwill.[20] The Delhi High Court applied the concept of cross-border credibility (established in NR Dongre v Whirlpool Corporation[21] to recognize the right of the applicants to the JOLEN mark because of its prior acceptance outside India and its international reputation and goodwill in Jolen Inc v Jain[22].
In the case, Las Vegas Sands Corp v Bhasin Infotech and Infrastructure Pvt Ltd[23] the Court acknowledged the trans-border prestige of the applicant’s VENETIAN and VENEZIA trademarks in relation to its hotels and services in Las Vegas and Macao. In support of this finding, the court relied on records in circulation in India (e.g., magazines, travel guides, and websites) as well as on a large number of tourists from India who had used the services of the plaintiff.[24]
Conclusion
With regard to banning the usage of descriptive terms in a trademark, Indian trademark law is at par with every other law worldwide. Adopting a popular language term and using it as a trademark is a volatile activity, as it raises the scope of misunderstanding in the minds of the general public.
However, there are cases in which the once forbidden descriptive mark acquires a secondary meaning/distinctive character, and the consumers associate the mark with the company of the applicant.
In order to prevent the registration of a registered trademark from being rectified or revoked or deleted, it is important to take reasonable precautions, i.e., to renew the registration of the mark from time to time, not to do something which would damage the distinctive character of the mark or would not permit the mark to remain unused for a period of more than five years.
Reference:
[1] Trademark Act, 1999
[2] Supra 1
[3] https://www.mondaq.com/trademark/975730/5-types-of-trademarks-for-products
[4] https://www.mondaq.com/india/trademark/531680/rectification-of-registered-trademark-in-india
[5] https://blog.ipleaders.in/registered-trademark/
[6] Section 47- Removal from register and imposition of limitations on the ground of non-use.
[7] https://selvams.com/kb/in/trademarks/cancellation-rectification-trademark-india/
[8] Supra 4
[9] Supra 2
[10] Supra 6
[11] Supra 3
[12] CIVIL APPEAL NO. 4767-4769, 19937& 19938 OF 2017
[13] The Trade and Merchandise Act, 1958 Section 111- Stay of proceedings where the validity of registration of the trademark is questioned
[14] Section 124- Stay of proceedings where the validity of registration of the trademark is questioned, etc
[15] https://www.vakilno1.com/legal-news/stay-suit-trademark-infringement-rectification.
[16] CS(COMM) 106/2018
[17] CS(OS) 3534/2012
[18] CS(COMM) No.902/2016
[19] https://www.lakshmisri.com/insights/articles/trends-in-applying-section-124-after-patel-field-marshal-judgement/
[20] https://www.worldtrademarkreview.com/anti-counterfeiting/india-4
[21] AIR 1995 Delhi 300
[22] MIPR 2010 (2) 176
[23] 2012VIIAD(Delhi)362
[24] Supra 19