This article is written by Jasmine Talreja who has been working for the past 12 years as an in-house counsel and is currently working with Cyfirma India Pvt Limited. This article talks about Trademarks, the role of the Intellectual Property Appellate Board (IPAB) about Trademarks, and recent important case laws on Trademarks. 

Introduction

If one summarizes the definition in Section 2(1)(i)(viii)(zb) of the Trademarks Act, 1999, it means Trademark that is a mark which is used for distinguishing the goods and services of one person from those of another. It can be compared to a unique birthmark. The distinction of a trademark can be achieved through the use of word, logo, label, device, name, signature, numerals, letters, and packaging of goods (3-dimensional shapes), sound, and combination of colours. Trademark helps to:

1. Identify the origin of goods,
2. Distinguish the goods of the proprietor from those of others,
3. Guarantee the quality of goods and to,
4. Advertise the goods.

Need for registration of trademark

Registration is the evidence of proprietorship of the Trademark. It gives the:

1. Proprietor exclusive right to use the trademark.
2. Proprietor legal rights about trademark to use the trademark.
3. It protects the trademark from infringement and
4. It allows the proprietor to enjoy the goodwill associated with the trademark.

Once registered, the trademark is valid for 10 years after which it needs to be further renewed for the next 10 years. A trademark can stay perpetual as long as it is maintained and renewed on time and as per the governing trademark laws.

What is the rectification of trademarks?

Rectification is the legal system to correct or rectify an omission or error that has been made in the Trademark registration regarding the Trademark. If an error has occurred while registering the Trademark or post-registration the applicant may himself apply for rectification of the Trademark.  However, this not only includes correction or an error but also includes changes. The applicant can at any time apply for rectification whether the mark is registered or needs to be registered. The applicant can also apply for cancellation of the Trademark.

Grounds for rectification of trademark

Section 57 of the Trademarks Act provides for grounds of Rectification of Register.

1. Altering applicants address, contact details or any information of the applicant;
2. Changing the Trademark class;
3. Altering the classification or description of goods & services or mark;
4. Changing the design or any other content of the mark;
5. Rectifying the errors made in the application;
6. Rectifying errors or information entered in the Trademark registrar;
7. Application for removal of the registered Trademark if it has not been in use for five years and three months;
8. Any other grounds as prescribed by the registrar.

If it comes to the attention of the registrar that the form contains any error or misrepresentation then the registrar on his own also can order for the filing of a rectification application. 

Who has the right to file for rectification?

Aggrieved Party can file for rectification/cancellation or removal of the registered mark. An aggrieved party means a party whose interests are affected by the registration.

Documents required for application of the rectification

Rectification application can be filed by the proprietor, aggrieved person, and registrar suo moto for rectification of the documents: 

1. If the process is initiated by proprietor:  Form “TM – 16” along with the fees;
2. If the process is initiated by an aggrieved person:  Form “TM-26” along with fees;
3. If the process is initiated by the registrar: Form “TM-M” along with fees.

Cancellation or rectification proceedings by Trade Mark Registry

Once the registrars receive the application along with the prescribed fees, and statement made by the aggrieved party then the Registrar serves the application and statement upon the registered proprietor to file the counter-statement (CS). After the CS is filed the matter reaches the stage of evidence. Both parties are required to file the evidence in the form of an affidavit. The matter is then set for final hearing. Both the parties are allowed the opportunity to present their case. Based on the merits of the case the order is made.

Provisions of appeal before Intellectual Property Appellate Board (IPAB)

The order of the Registrar is appealable before Intellectual Property Appellate Board (IPAB). The appeals have to be filed within 3 months. An appeal can be admitted after 3 months/ if the appellant satisfies the Appellate Board that the reason for the delay is genuine.

There is no provision of an appeal against the order passed by IPAB. However, Writ petitions can be filed in the High Court under Articles 226 and 227 of the Constitution. The Supreme Court can also be approached under Article 136 of the Constitution of India.

The procedure followed by IPAB  for rectification or cancellation

The party filing the application is required to submit its case and evidence along with the application. The registered proprietor also needs to submit evidence along with a counter-affidavit. IPAB then appoints a hearing for oral submissions. Based on merit order is passed in due course.

Powers and functions of IPAB

The provisions relating to IPAB are contained in Sections 83 to 100 of the Trademarks Act. The IPAB came into existence on 5th September 2003. The intention to create this board was to hear, adjudicate appeals, to speedily dispose of the appeals against the registrar’s decision under the Indian Trademarks Act and Indian Geographical Indication of Goods Act, 1999. IPAB is headquartered in Chennai. It has 4 other branches in Mumbai, Delhi, Kolkata, and Ahmedabad.

The Civil Procedure Code does not bind IPAB. Rather IPAB is guided by the principles of Natural Justice. IPAB can regulate its proceedings. IPAB will have the same powers as that of the Civil Procedure Code like power to receive evidence, to examine witnesses, ordering to examine public records, and any other matters. IPAB can also prosecute for contempt of authority by public servants and offences under public justice.  IPAB shall have the power to punish if it is given false evidence. The Chairman has the power to transfer cases from one bench to another under Section 117-B of the Patents Act, 1970. Similarly, IPAB shall have the power to frame rules for procedures and the conduct of proceedings and under this act. As per Section 117-G of the Patents Act, below mentioned cases shall be transferred to the Appellate board:

Appeals against order of the controller and,

• Cases about the revocation of the patent. This will exclude counterclaim in an infringement suit and rectification of the register pending before any High Court.

Recent important case laws on trademark law in India

Chakshu Food Products v. Jollibee Foods Corporation

Facts of the case

In this case, a fast-food brand under the trademark ‘Jollibee’ belonged to the respondent. The wordmark ‘Jollibee’ along with the name had the image mark of a bee. The respondent had obtained the trademark ‘Jollibee’ in 2005 but had not used the same till 2017 and had not commenced business in India. The registration of the trademark was on a “proposed to be used basis”. The appellant used a similar mark with the image of a bee. The respondent was aggrieved by the same and prayed to the court for an injunction to restrain the appellant from using the mark. The Trial Court granted an injunction to the respondent. The appellant got aggrieved by Trial Court’s order hence the appellant approached the Delhi High Court.

Observations made by the court

Delhi HC observed that the respondent had not commenced business in India from 2005 to 2017. The business of both the respondent and appellant was different. Respondent was the owner of a fast-food chain whereas the appellant was selling packaged spices. The respondent was aware of the appellant’s business when the appellant sought registration of mark ‘Chakshu’ with an image of a bee in Nov 2016. The respondent sat on it and filed the suit many months later in August 2017. The respondent had delayed in seeking an ex-parte injunction. Hence the court ruled in favour of the appellant. Court referred to the Supreme Court’s verdict in the case of Milmet Of tho Industries and Others v. Allergan Inc. (2004), where it was held that multinational companies would have no right to claim exclusivity of the Trademark if they do not enter or intend to enter in a reasonable time into business in India. Further, as per Section 47 of the Trademark Act, a trademark can be removed from the register on the grounds of non-use of the mark.

Yahoo!, Inc. v. Akash Arora & Anr

Facts of the case

In this case, the plaintiff owned the trademark “Yahoo” and the domain name “Yahoo.com”. The defendant tried to use a similar name “Yahooindia.com” and went ahead and registered the same. The plaintiff contended that the names were nearly identical and would confuse the internet user that the names had a common source of connection.

Observations by the court

The court stated that the name Yahoo had acquired uniqueness and distinctiveness and it did not matter that “yahoo” was a dictionary word. The use of the domain name “yahooindia.com” by the defendant led to the passing of the business of the plaintiff as that of the defendant.  Hence the court allowed the order to be discontinued.  The Court held that a domain name served the same function as a Trademark and therefore domain name was entitled to equal protection like a Trademark. In Rediff Communication v. Cyberbooth & Anr (2000), the Bombay High Court observed the value and importance of a domain name and stated that a domain name is like a corporate asset of a company.

DM entertainment v. Baby Gift House and ors.

This is the case with celebrity merchandising. We all know about pop star Daler Mehendi from Punjab. A company was incorporated to manage the pop stars’ careers. The company had all the rights, titles, and interests in the pop star along with the Trademark Daler Mehndi. Defendant’s business was to make miniature toys. Defendants’ company made toys of Daler Mehndi and crashed on his popularity. The plaintiff Daler Mehendi was aggrieved with the same and filed a suit for permanent injunction in the court. The suit of the plaintiff was that the defendant company was taking advantage of Plaintiff’s popularity. Neither had the plaintiff given any authority or any license to use the reputation of the plaintiff concerning goods or services associated with the plaintiff. The use of the same would give an impression to the public that the goods or services were associated with the plaintiff. Hence this would lead to passing off. The plaintiff further stated that this use was done without permission from the plaintiff and the intention was commercial gain. This constituted infringement of the plaintiff’s right to publicity.

Passing off happens when a mark is deceptively similar to the mark of another but it is intentionally used to create confusion in the minds of the consumer that results in the damage or loss of business for the lawful owner of the trademark. A typical example is character merchandising which is yet to be fully explored in India. In this case, the court ruled in favour of the plaintiff and ordered a compensation amount of Rs 1, 00,000 to the plaintiff.

Conclusion

To prevent the rectification, cancellation, or removal of a registered trademark, proper precautions need to be taken, for example, a trademark needs to be timely renewed; the Trademark needs to be active which means 5 years and 3 months should not have passed before the Trademark is used; nothing should be done which destroys the distinctiveness of the Trademark.

It is important to note that on April 4, 2021, the president of India promoted the Tribunal reforms (rationalization and conditions of service) ordinance 2021, (“ordinance”) hereby abolishing IPAB. This has been done by making amendments to the Patents Act, 1970, the Copyright Act, 1957, the Trademarks Act, 1999, and the Geographical Indication of Goods Act, 2000.

As per the ordinance, the pending matters before the IPAB will be transferred to the relevant High Court. The High Court may either proceed with the cases from the stage at which they were before the transfer or earlier stage as it deems fit. As per the reports, the primary reason for the ordinance was IPAB’s slow justice delivery. The IPAB’s have been functional for the past 18 years which will make it difficult for High Courts to take up the additional responsibility. It needs to be seen how the government will deal with the issues of pending large volumes of cases from IPAB to the High Court. 

References

• https://www.legalwiz.in/blog/when-can-a-Trademark-be-removed-from-the-registry
• https://www.registerexperts.com/trademark-rectification/
• https://cleartax.in/s/Trademark-rectification-procedure
• https://jashvaidya.wordpress.com/2015/11/28/role-of-intellectual-property-appellate-board-ipab/
• https://www.linkedin.com/pulse/note-rectification-mahendra-rao
• https://talwaradvocates.com/5-landmark-judgements-Trademarks-law/
• https://www.azbpartners.com/bank/intellectual-property-appellate-board-abolished/

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