This article is written by Nehal Wagle, pursuing the Certificate Course in Trademark Licensing, Prosecution and Litigation from LawSikho.
Table of Contents
Introduction
The concept of identifying the source of manufactured goods by its unique mark was an ancient practice but its importance in trade and commerce was realised with the advent of the industrial revolution [1]. Trademarks soon became an indispensable form of intellectual property rights in the industry of trade and commerce. Further, the mass production, sale and distribution of goods created a lot of confusion with regards to the trade origin of the goods thus giving rise to a creation of trade mark law. In an economic scenario where, multiple manufacturers tried their best to sell their goods, the need to distinguish their goods from those of other manufacturers was realised. Soon they began to rely on a variety of distinguishing features associated with goods or services like symbols, marks or devices, shape of goods, configuration and so on. The main objective of trade mark law is to deal with the precise nature of rights that a person may acquire in respect of trade marks, like in case of ownership, infringement, remedies, the acquisition and transfer. The trademark law underwent frequent changes to suit the changing scenarios.
Trademark law in India
In India, the seed for the Trade Mark law was sown in the year 1938 when India borrowed from the British Trade Mark Act, 1938 and developed its first Trade Mark act in 1940. In the Post-Independence period the act was moulded into a new act – The Trade & Merchandise Mark Act, 1958. Today the trade mark law in India is governed by the Trade Mark Act, 1999.
Subject to the provisions enlisted under Section 25 of the Trade Marks Act, 1999, a trade mark is granted registration for a period of 10 years from the date of registration.
Registration of a trade mark in India is valid for a period of 10 years which can be renewed further for a period of 10 years from time to time subject to payment of renewal fees and application in a prescribed manner.
However, it is to be noted that the registration of trademarks does not guarantee its validity forever. There always exists a possibility that a mark may have been registered wrongly or may have continued to remain wrongly on the register due to certain events subsequent to registration or the mark has not been used for a certain period of time. In such cases the Trade Mark Act, 1999 provided for two procedures namely, Cancellation of trademarks and Rectification of trademarks. An application for Cancellation can be filed before the Registrar of Trademarks or Intellectual Property Appellate Board (IPAB).
Case law
The question of validity of Trade Marks was answered by the division bench of Delhi High Court in Marico Limited vs Agro Tech Foods Limited[2], “Section 31(1) registration is only a prima facie evidence of validity and not conclusive evidence. Registration would only be a conclusive evidence of validity if the rectification/cancellation proceedings filed for cancellation of the registered trademark do not finally succeed.”
Who may file for the cancellation petition?
As per Section 57 of the Trade Marks Act, 1999 any aggrieved person can file application for cancellation before the Intellectual Property Appellate Board for cancelling, varying the registration of a trade mark.
Cancellation by registered proprietor
In certain cases, the trademark owner can by himself initiate voluntary cancellation of the registration of the trademark in India. The voluntary cancellation of trademark registration is generally due to an agreement entered by the trade mark owner with a third party or for other business decisions taken by the trademark owner.
Grounds for filing a cancellation petition
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Contravention to abide by a condition
“Contravention on failure to observe a condition”[3] is attracted only in case where there is non-compliance or violations of any conditions put forth by the Registry. It is however pertinent to note that the provision does not apply to limitations as defined under section 2(1) (l). For example- if express conditions are imposed on the mark with regards to the colour combination of the mark then in such cases failure to abide by such conditions would amount to violation and thereby attract the provisions of Section 57(1) for cancellation or varying the registration of trade mark.[4]
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Omission from the register of any entry
This ground can be invoked in cases where a trade mark which ought to have been registered with condition or conditions has been registered without any.
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Entry made in the register without sufficient cause
If a registered mark is found to be in contravention to any provisions enlisted under the Trade Marks Act,1999 or the under the Trade Mark Rules, 2017 then in such cases the registered mark can be challenged without sufficient cause.
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Error or defect in any entry in the register
The registration of a Trade Mark can be challenged in cases where it can be established that a registered trade mark or its entry in the register has erroneously continued to be in the register. Example – Where a trademark should not have been registered owing to contravention with one or more of the-
- Absolute grounds of refusal (Section 9)
- Relative grounds of refusal (Section 11)
- Prohibitions of registration of names of chemical elements or international non-proprietary names (Section 13)
- Use of names and representations of living persons or persons recently dead (Section 14)
- Provisions regarding the application of registration under (Section 18)
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Non-use
That the Trade Mark was registered without any bona fide intention on part of the proprietor (any proprietor), and that there has been no bona fide use of the Trade Marks in relation to the goods and services for time being up to a date of 3 months before the date of the application. (Section 47)
- In cases where the Trademark has not been used within five years of its registration becomes liable for removal either completely or in respect of those goods or services for which the mark has not been used. (Section 47)
The question pertaining to non-use of Trademark was answered by Calcutta High Court in M/S. J.N. Nichols (Vimto) Limited vs Rose & Thistle and Another.[5]
Where it was held, “Incidentally, it is to be noted that use of the mark does not postulate actual sale of the goods bearing such a mark. ‘Use’ to my mind can be in any form or way and does not necessarily mean and imply actual physical sale and it is now well settled that even mere advertisement without having even the existence of the goods can be said to be an use of the mark.”
Thus, it can be said that in order to constitute “USE” in relation to trade marks it is necessary that the adoption is genuine, and in conformity with commercial/market standards. In cases where the intention behind registration of a mark is not to use the mark but just to acquire registration then the same shall amount to malafide use of the mark.
Red Bull AG vs. Dr. Reddy Laboratories Ltd[6]
The present application has been filed for removal of trade mark no.1058481 from class 09 registered in the name of the DR. Reddy’s Laboratories before Intellectual Property Appellate Board.
Red Bull alleged that the Registered proprietor`s- Dr. Reddy Laboratories Ltd registered tagline ‘Your wings to life’ was deceptively similar to the Applicant’s mark Gives you wings and claimed it as a unique concept. It was further alleged that Dr. Reddy Laboratories had not undertaken any activity to commence the use of the impugned mark for period of 19years (since registration in November 2001)
The IPAB in the instant matter held that, “The rival trademarks are neither deceptively similar nor identical with. The applicant mark Your Wings to life is not the main mark. It is the sub brand. The goodwill and reputation alleged by the applicant is not pertaining to the main mark Red Bull,”
The question pertaining to the non use of the mark will only arise in matters where it can be proved that the party seeking application for rectification/ cancellation is an aggrieved party. In the instant case, it was held that the two marks ‘Your wings to life’ versus the Applicant`s mark ‘Gives you wings’ are not similar.
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Additional grounds for cancellation of registration in case of Collective Mark[7] (Section 68)
Mark to mislead public
Where a collective mark has been used by the proprietor or authorised user in a way which is likely to mislead or cause confusion amongst the public with regards to the collective mark in such cases an application for cancellation of a collective mark can be initiated
Failure to abide by regulations
Where the proprietor has failed to observe or abide any rules and regulations governing the use of the mark then an application for cancellation can be filed
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Cancellation of registration of certification trade marks (Section 77)
In case of certification marks the Registrar may after giving the registered proprietor an opportunity of opposing the application, make an order for expunging or varying of any entry in the register to certification mark-
No longer competent
The proprietor is no longer competent, in the case of any of the goods or services in respect of which the mark is registered, to certify those goods or services;
Failure to abide by rules and regulations
That the proprietor has failed to observe any provisions of the regulations to be observed on his part with regards to the certification of mark.
No public advantage
That it is no longer to the public advantage that the mark should remain registered;
Requisite for Public advantage
That it is requisite for the public advantage that if the mark remains registered, the regulations should be varied.
Procedure for filing a cancellation petition
Application for cancellation of a Trade Mark from the register can be made-
With the Registrar of Trade Marks- in TM-O along (form can be accessed here http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/FORM-TM-O.pdf ) with fees amounting to Rs.2700/- in case of E-filing and Rs. 3000/- in case of physical filing along with appropriate evidence.
And with IPAB on payment of Rs.5000/- and by entering the requisite details in Form 1 (can be accessed here: https://www.ipab.gov.in/forms-and-fees-pdf/Trade-Mark/first-page-table/Form-1.pdf) along with appropriate evidence.
Important points to be considered while drafting a cancellation petition
- Give Brief facts about the Petitioner (including the name, address, the first use of the mark in relation to goods/services).
- Date of application and date of registration of the Registered Proprietor`s mark (it is important to note that a petition for cancellation can be filed only against a registered mark).
- Date of first use of registered proprietor`s mark.
- Description of goods and services of registered proprietor and their similarity whether structural, phonetic, with the Petitioner.
- Any visual, structural or phonetic similarity with the petitioner’s mark.
- Proper evidence must be annexed to the arguments wherever necessary.
References
[1] P Narayanan, Intellectual Property Law, 147 (3rd edition)
[2] https://indiankanoon.org/doc/39264970/
[3] Trade Mark manual by IP india
[4] Supra 2
[5] AIR 1994 Cal 43
[6] https://ipab.gov.in/ipab_orders/chennai/MP.NO.49-2015-in-ORA-262-265-TM-CHN.pdf
[7] Trade Mark Manual
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