The article was written by Satyanshu Kumari. This article deals with Section 57 of the Trade mark Act, 1999, which provides the provision for the rectification of the trade mark in India. This article also highlights the importance of preventing trade mark cancellation and provides precautions for rectification. Further in this article, the interplay between Sections 47, 57 and 124 has also been discussed in detail. 

Introduction 

A trade mark is a brand or name associated with a service or product of an individual or company. It is a unique mark through which a consumer identifies a product or service of the company or an individual. It differentiates the product or service provided by the individual or a company. In India, trade marks are regulated under the Trade marks Act, 1999 (hereinafter referred to as the “Act”) and Trade mark Rules, 2017 (hereinafter referred to as the “Rules”). Trade mark as defined under Section 2(1)(m) of the Act means a mark that includes a brand, device, heading, ticket, label, name, word, signal, letter, the shape of goods, numeral, packaging or combination of colour or any such combination. 

A trade mark can be a visual symbol or logo used to indicate the source of the products or goods. The symbol or logo can be a word, signature, number, geometrical figure, monogram, a combination of words and numerals, a combination of colours with a logo, or it can even be a sound mark. 

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With trade marks, companies can set themselves apart from their rivals and differentiate their goods and services. In the eyes of the law, trade marks also protect a company’s identity from trade mark violation and stop unauthorised use by outside parties.  

Section 47 and Section 57 of the Trade marks Act, 1999, provide for the cancellation or removal of trade mark from the Registrar of Trade marks. Once a trade mark is registered, the trade mark receives protection for 10 years, after which it must be renewed. This period begins from the date of application or the last renewal of registration, whichever is applicable. 

In this article, we will discuss and learn more about Section 57 of the Act and its interplay with Section 47 and Section 124 of the Act with relevant case laws to support the same.

Meaning of trade mark rectification

Trade mark rectification can be defined as ‘rectifying the error or omission made in the register after registration of trade marks’. A trade mark could still be on the trade mark register even after its expiration or after it was wrongly registered. In such cases, correction may be necessary and that is why the Trade mark Act contains provisions for correcting registered trade marks. 

Chapter 7 speaks about the provision for rectification. According to Section 57 of this Act, ‘any individual who is connected with the Trade mark Registration or aggrieved by it can apply for rectification.’ Though the provisions related to rectification do not support every situation, but sometimes it leads to the cancellation of the trade mark registration. Thus, it should be done with caution. 

Grounds for rectification of trade mark registration

Section 57 of the Act provides grounds under which the rectification of the register is being made:

  1. Clause (1) and clause (2) of Section 57 of the Act provide that the ‘tribunal may take such actions for cancellation or variation of the trade mark registration on the grounds of any contravention or failure to observe a condition when any person aggrieved by any entry in the register of trade marks makes an application to the Appellant Board or the Registrar’. A party who feels wronged by an entry recorded in the register has a statutory right to request correction under Section 57. The said right is circumscribed by certain requirements, such as:
  • Contravention or failure to observe the requirement listed in the register pertaining to the trade mark registration. [Section 57(1)].
  • The register has to suffer in such cases where there is the absence or omission of an entry like a disclaimer, a condition or an imitation of the registered mark; [Section 57(2)].
  • The registration was gained by fraud or false representation of facts; the registered mark was identical to an existing registered mark; or there is another reason why the inclusion in the register is made without sufficient justification. [Section 57(2)].
  • Error or defect in any entry made in the register [Section 57(2)].
  • The entered mark was wrongly remaining on the register, i.e., it is contrary to some of the provisions of the Act or is likely to confuse the public and trade; for example, the mark is in contravention of Section 9 and Section 11 of the Act. [Section 57(2)].
  • The renewal fee has yet to be paid.
  1. Clause (4) of Section 57 states that following notification and an opportunity for the parties involved to be heard, the tribunal, or the registrar or the Appellant Board, may either cancel, vary, make, or remove the entry in the question.
  2. Section 31(1) of the Act provides that the original registration of the trade mark shall be prime facie evidence of the validity of the mark in all the legal proceedings relating to a trade mark, including in an application under Section 57.
  3. An application for rectification of a registered trade mark is required to be filed before the same Trade Mark Registry where the application for its registration was filed. The procedure before the Registrar is prescribed under Rules 97 to 100 of the Trade Mark Rules, 2002. In the event of a collective mark or certificate mark, an application pursuant to Section 57 must be submitted in duplicate on Form TM-O. A statement of the case outlining the facts supporting the application, the relief sought, and the nature of the applicant’s interest must be submitted with the application.  
  4. Although the Registrar of Trade marks has the authority to hear rectification petitions against registered trade marks, the Intellectual Property Appellate Board (hereinafter referred to as the “IPAB”) alone has the authority to hear applications for rectification of such trade marks in cases where an infringement suit is pending before the civil court and the defendants in the suit are contesting the validity of the plaintiff’s trade mark. 

Note: The Intellectual Property Appellant Board has been abolished under the Tribunal Reforms (Rationalisation and Conditions of Service) Ordinance 2021 (hereinafter referred to as “Ordinance”) issued by the Government of India on 4th April 2021. Now the functions of the IPAB and various other tribunals that have been abolished under the Ordinance have been assigned to the country’s commercial courts and high courts. 

Preventing the trade mark rectification or cancellation in India

The following steps should be followed in order to prevent the rectification or cancellation of trade marks in India:

  • Renew the marks from time to time.
  • Preserve the distinctive character of the mark and avoid it from becoming deceptive.
  • Not keeping the mark unused for a period exceeding five years or three months from the date of registration of the mark.

Precautions for rectification

To avoid the need for rectification of the trade mark register, some precautions can be taken, the steps of which are given as follows:

  • The trade mark must not be kept unused for a period exceeding five years and three months from the date of registration of the mark. 
  • The proprietor of the trade mark must take immediate legal action if he finds any kind of infringement or unauthorised usage of his trade mark or any mark similar to his trade mark.
  • The trade mark must be renewed on time and in a prescribed manner.
  • The proprietor of the trade mark should prevent their mark from losing its distinctive nature or becoming generic as a household name.  

Clause-wise explanation of Section 57 of Trade Marks Act, 1999

Section 57(1)

Under this sub-section on the application, if made in the prescribed manner either to the high court or the registrar by any aggrieved person, the registrar or the high court as the case may be may make such order as it thinks fit for cancelling or varying the registration of the trade mark on the ground of any contraventions, failure to observe a condition entered on the register in relation thereto.

Section 57(2)

Under this subsection, if any person who is aggrieved by the absence or omission from the register during any entry of their trade mark, or by any entry made in the register without having sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the registry, may apply in the prescribed manner to the Appellant Board or the registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

Section 57(3)

Under this sub-section, the registrar or the high court may, as the case may be, decide any question that may be important in connection with the rectification of the register. 

Section 57(4)

Under this sub-section, the registrar or the high court may give notice in the prescribed manner to the parties involved after giving them an opportunity to be heard and may make the order according to sub-sections (1) or (2). 

Section 57(5)

Under this sub-section, any high court order that follows the register’s correction will specify how notification of the correction should be delivered to the Registrar, who will then correct the register under the instructions after receiving them.  

Procedure of rectification 

Given below is the step-wise detailed procedure for rectification of the trade mark register that one may need to follow to do the same:

Drafting of an application

The first step for rectification is that the applicant must draft an application and put all the necessary information correctly and accordingly. The document should be properly drafted since any mistake in it may lead to rejection of the application. 

Form filling

The relevant applicant must prepare the application and then submit it to the trade mark registrar along with the fees required. The applicant cannot proceed further before applying for rectification of the relevant trade mark without completing this step. 

Documents submission

The necessary supporting documents need to be submitted to either the registrar or IPAB in proper form with all supporting documents after all the requisition information is provided on the form. For rectification, address, PAN or identity verifications must be certified alongside relevant documents. 

Documents verification

All of the documents will be checked during this phase once the applicant has submitted them. The applicant can proceed to the next stage if the verification is completed and the relevant authorities, such as the registrar or IPAB, are satisfied. The application will be rejected if the registrar or IPAB are not satisfied with the supporting documentation that the applicant submitted. 

Final order 

Finally, the Registrar or the Appellant Court issues an order as they see fit, i.e., to amend, add, change or substitute the trade mark register, following a hearing from both parties and correcting the evidence. 

Consequences of trade mark rectification on the trade mark

Even though due procedure and all relevant evidence are taken into account when concluding the trade mark, a registered trade mark may be revoked by an application filed by the party that feels wrong. Assume that a trade mark has not been used in the past five years or has not been honestly used in the market for at least three years; in that case, the trade mark register may remove it. It is also noted that any trade mark that is registered must be used appropriately to preserve its reputation in the marketplace. In the event that none of the aforementioned requirements are met, the trade mark will be cancelled or become inactive. 

Interplay between Sections 47, 57 and 124 of Trade Marks Act, 1999

Section 47, Section 57 and Section 124 of the Act are intertwined and deal with the cancellation or removal of a trade mark from the trade mark registry.

Section 47 of the Act deals with the grounds for cancellation of a registered trade mark. According to this Section, any interested person can file a petition to cancel a registered trade mark because the trade mark was registered without sufficient cause; it is not distinctive, it has become generic, or it is likely to confuse, among other grounds. 

In the case of Eurobond Industries Pvt. Limited vs. Euro Panel Products Private Limited (2018), it was held that the non-use of any trade mark by the proprietor after its registration does not by itself render the mark incorrect but gives a right to the aggrieved person to file an application for rectification of the register by removal of the mark.    

Subsequently, Section 57 of the Act deals with the ‘rectifying the register’. This section empowers the Registrar of Trade mark to make corrections or amendments to the trade mark register if it appears to him that there has been an error or omission in the register or if it is necessary to rectify the register for any other reasons.  

Section 124 of the Act deals with the effect of removal or cancellation of a trade mark from the register. According to this section, if the trade mark is removed or cancelled from the register, it shall be deemed never to have been registered. The cancellation or removal of a trade mark from the register shall be effective from the date of the application for the cancellation or removal.

Consequently, a trade mark that is withdrawn or revoked from the register will be considered to have never been registered because of the intriguing interaction between the aforementioned clauses. The primary objective of Section 47 and Section 57 to Section 124 is to avoid the multiplicity of the proceeding, which we will find out subsequently with the help of different case laws. 

Reciprocity between these sections

In the recent judgment by the Delhi High Court in the case of Anubhav Jain vs. Satish Kumar Jain (2023), the Court held that “the rights under Section 57 of the Act to seek rectification of the register are independent of the rights under Section 124 that allows seeking a stay over the infringement proceedings when the validity of the trade mark is raised as a defence.” 

This interplay was ‘the point of a previous controversy that the Supreme Court addressed in the case of Patel Field Marshal Agencies vs. P.M. Diesels Ltd. (2017). In addressing the petition under Section 57 and Section 124 of the Act, the Supreme Court resolved the dispute concerning the relationship between Section 47 and Section  57, which mentions about right to request the cancellation of a registered mark or rectification of the register in relation to the subject mark’s invalidity as a defence in a Section 124 infringement suit. But neither the plain language of the Patel Field Marshal case nor the precedent set by the Delhi High Court’s earlier ruling aligned with the interpretation offered in the Anubhav Jain case.

The right to request rectification of a mark under Section 47 or Section 57 is subject to Section 124 of the Act, while infringement litigation pertaining to such a mark is pending adjudication, as the Supreme Court has made quite clear.  

The Supreme Court made it mandatory for the party to not only raise a plea of invalidity in the suit but also ensure that the civil courts frame the issue before filing the rectification petition. Furthermore, upon abandoning such a plea, Section 124(3) shall apply, and the ‘right to seek rectification shall be lost forever.

Though this judgement, the Supreme Court has overruled the dictum of the judgment on this point, i.e., B. Mohamed Yousuff vs. Prabha Singh Jaswant Singh (2006) and Data Infosys Ltd. vs. Infosys Technologies Ltd. (2012),  which held that the right to seek rectification under Section 47 and Section 57 of the Act does not stand extinguished if, in an infringement petition under Section 47 or Section 57, it is filed after the expiry of the period given under Section 124(2) or (3) of the Act.

Furthermore, both Section 47 and Section 57 of the Act list the circumstances that may permit an ‘aggrieved person’ to file a rectification petition against a trade mark recorded on the register, although the underlying connotation that the phrase carries with it in each of the two provisions differ, as affirmed by the Supreme Court in Hardie Trading Ltd. & Anr. vs. Addisons Paint & Chemicals Ltd. (1993).

Relevant and important judgements

Patel Field Marshal Agencies vs. PM Diesels Ltd. (2017)

Facts of the case

In this case, the respondent was the actual proprietor of the three registered trade marks, which included and had the common phrase “Field Marshal” in the trade marks. The respondent filed an appeal in 1989 for the infringement of the trade mark and the issue came up before the Delhi High Court. The appeal mostly constituted three claims:

  1. The respondent company claimed an injunction order from the Delhi High Court permanently regarding the prevention of the usage of the phrase “Field Marshal” by P.M. Diesels Ltd.
  2. The appeal also claimed the account of profits that P.M. Diesels Ltd. incurred while using their trade mark. 
  3. The last claim that was put forward by the Patel Field Marshal Agencies was to order an interlocutory injunction.

The arguments put forward by the respondents scrutinise the legislative validity of the trade mark laws that were questioned in the present case. When the appeal was pending before the Delhi High Court, it was also appealed before the Gujarat High Court for the proceedings.  

Issued raised in the case

Verdict of the Court

The court held in the present case that ‘all questions regarding the validity of a trade mark must be resolved by the registrar or the High Court, not the Civil Court. Their decisions will be binding on the Civil Court. If the issue of invalidity arises outside of a lawsuit, the statutory authority alone has the power to address it. However, if a suit is ongoing, the statutory authority can only step in if the Civil Court finds the plea of invalidity to be prima facie valid.

The Supreme Court has made it clear that the ‘right to seek rectification of a mark under Section 47 and Section 57 is subject to Section 124 of the Act while an infringement suit relevant to that mark is pending adjudication’. The Civil Court must frame an issue before the party files a rectification petition, in addition to raising a plea of invalidity in the litigation, as mandated by the Court. 

Additionally, if a party abandons a plea of this kind and does not pursue it further, even after the court grants an extension of time in accordance with the Act, Section 124(3) of the Act will effect, and the ability to request correction will be permanently deleted. 

Anubhav Jain vs. Satish Kumar & Anr. (2023)

Facts of the case

In this case, the plaintiff instituted a petition under Section 57 of the Act for the cancellation or rectification of the register. Nevertheless, the current petition does not adhere to the procedure outlined in Section 124 of the Act; the defendant disputed its maintainability. It should be mentioned that the defendants in this instance did not bring up the issue of invalidity in the trial court. 

Issued raised in this case

  • Whether Section 47 and Section 57 will comply with Section 123 of the Act and whether the rights under Section 124 in derogation of the rights available under Section 57?  
  • Whether the party can go for recourse under Section 47 and Section 57 of the Act when Section 124 is not raised in a suit?

Verdict of the court

The Delhi High Court held in this case that the right under Section 57 for ‘cancellation of a mark and rectification of the register remains available’. However, ‘if an infringement suit that has been filed by either of the parties and one of them against it pleads invalidity of the mark as a ground of defence to the suit, then the party filing the infringement suit would acquire an independent right under Section 124(2) of the Act to move the IPAB for rectification of the register’. 

Thus, in derogation of Section 57, Section 124 must be seen as an ‘additional relief’ rather than as an exclusive remedy. Consequently, if an action raises the defence of invalidity, recourse may be sought under Section 47 and Section 57, as well as Section 124 of the Act. 

Conclusion

The Trade mark Act, 1999, emphasies that “granting and registering trade marks should be done with fairness, equity, and bona fide intention.” The Registrar may take necessary measures, such as revoking such trade marks, if they discover any genuine attempts to deny others their legitimate trade mark registrations. 

It is vital to take reasonable care to abide by trade mark procedures and file all required paperwork on time and precisely to avoid a great deal of litigation in the trade mark domain. It is also crucial for a trade mark to be renewed on time to prevent being removed from the registry. Businesses may protect their intellectual property rights and confidently negotiate the trade mark landscape by following the laws pertaining to trade marks.  

Frequently Asked Questions (FAQs)

What is the validity period of the trade mark?

The term of validity for all registered trade marks is 10 years from the date of application. A trade mark can be simply renewed at the end of its validity by paying the government registration cost. 

Is it possible to renew a trade mark registration in India after three years? 

In India, a trade mark registration had to be renewed every 10 years, or else it risked being struck from the register. A request for renewal may be submitted at any time during the year before the expiration date, and there is a grace period of one year following the expiration date, subject to the registrar’s discretion upon the presentation of a good-faith reason for the request’s late filing.  

References

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