In this article, Amitabh Ghosh who is currently pursuing M.A. IN BUSINESS LAWS, from NUJS, Kolkata, discusses rectification of registered trademark.
Rectification of registered Trademarks
- Before going into the discussion of rectification of registered Trademark, some of the highlights of Trademark laws in India and its background are inevitable to understand the topic in totality.
- The rules and regulations governing the Trademark in India and its background should be aware by the common man to have clarity on the topic and make the topic more fruitful.
- The first Trade Marks law in India was enacted in 1940, before that it was based on common law system which was followed in England before the enactment of Registration Act, 1875.
- Earlier cases pertaining to Trademarks were decided on the basis of section 54 of Specific Relief Act, 1877, while the registration for obtaining ownership was secured under Indian Registration Act, 1908.
- The first Trade Marks Act, 1940 was replaced by The Trade and Merchandise Marks Act, 1958.
- The later Act consolidates the provisions of Trade Marks Act, 1940. The Indian Merchandise marks act, 1889 (Which was in force since 1899) and the provisions related to Trademarks in the Indian Penal code.
- The Trade and Merchandise Marks Act, 1958 has been revised and repealed by The Trade Marks Act, 1999 to comply with the provisions of TRIPS (Trade related aspect of Intellectual property rights) Agreement, 1995.The bill received the assent of the president on 30th Dec-1999 and became an act.
New elements, which was introduced in the 1999 Act, which were missing in 1958 Act are,
- It enlarged the definition of TRADE MARK to include the shape of goods, packaging and combination of colors which can be adopted as Trademark.
- The new Act includes services in addition to goods.
- Simplified the procedure of registration.
- Provides registration of collective marks owned by AOP.
- Established IAPB for speedy disposal of appeal.
- Increased the period of registration and renewal from 7 years to 10 years.
- It has made some TM offences as cognizable offence.
- Transferred the final authority for registration of certification of TM to the Registrar.
- Provides for the filing of a single application for goods or services falling in more than one class.
- Enhanced the punishment provision at par with Copyright Act, 1957 to prevent the sale of spurious goods.
In common man parlance, trademark means and includes a mark capable of being represented graphically and distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and a combination of colors.
- When a person enters into any venture either in the field of manufacture or providing services and is successful in establishing its own market for its products which enjoys a good reputation as far as quality is concern, he wants his goods or services to be recognised by the consumer though a mark/design/symbols etc from those of its competitors.
- It may be possible that two products nearly resemble each other in all aspect which can deceive a consumer easily unless they are recognised by a mark, which is known as Trademark of the goods or services.
- Any person claiming to be the proprietor of the TM used or proposed to be used shall apply in writing, to the Registrar in the manner prescribed by the Act.
- Every such application shall be filed in the office of the Trademark Registry within whose territorial limits the principal place of business in India is situated.
- Advertisement of the application once an application for registration of a trade mark has been accepted whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in manner prescribed by the act.
Opposition to registration
- Any person may with 3 months from the date of advertisement, give notice in writing to the Registrar of opposition to registration of the Mark as registered Trademark.
- The registrar shall within send the notice of opposition to the applicant asking him to send his counter statement and pieces of evidence he relied in support of his claim.
- On receipt of a counter statement from the applicant, the Registrar shall forward the same to the person who opposed the application to file his statement and grounds of opposition.
- After considering the presentation of both the parties the registrar may either register the mark or refuse to register the mark or it provide for any amendments or correction to be made in the mark.
Once the Registrar is satisfied that the application is complete in all respect,
- The application has not been opposed by anyone within the time period mentioned in the act for filing notice of opposition or
- The application has been opposed but opposition hasbeen decided in favour of the applicants.
- The Registrar shall register the TM and issue a certificate in the prescribed form of the registration thereof, sealed with the seal of the TM registry.
If the process of registration is not completed within 12 months from the date of application by default of the applicant; the registrar may after giving the notice to the applicant treat the applicant as abandoned unless the same has beenrectified by the applicant within the time prescribed by the registrar.
Duration, renewal, removal and restoration of registration
- The registered Trademark under the act get protection for an initial period of 10 years from the date of registration but may be renewed in the manner prescribed by the Act.
- The registered Trademark under the act get protection for a initial period of 10 years from the date of registration but may be renewed in the manner prescribed by the Act.
- Where a TM has been removed due to non payment of fees, the Registrar shall after 6 months but before 1 year from the expiration of last registration of the trade mark, on receipt of complete application along with the prescribed fees renew the registration with generally or subject to such conditions as it think fit for a period of 10 years from the expiration of the last registration.
It is a legal process to correct or rectify the error or omission in the details of a trade mark as recorded which had happened at the time of registration of trademark. The Indian Trade Mark Act provides for rectification in the register of TM which has been wrongly registered Trademark or may have remained on the register ever after its validity period as provided at the time of registration.
Who can file rectification petition
An aggrieved party who is affected by such entry may file for rectification of register TM on the grounds provided by the Act.
Rectification petition cannot be filed anonymously since the onus to prove the following facts,
- that he/she is actually affected,
- proper evidence reflecting that the mark hasn’t been used by the trademark owner needs to be submitted in the course of proceedings by the “aggrieved person”.
- The above two pre conditions were specified to protect the right of innocent owner and to stop a third party to take advantage of the rights given in the act maliciously.
- The Act of 1999 has narrowed down the grounds as compared to those provided by the earlier act of 1958 Act.
The aggrieved party can filed its application on any of the grounds mentioned below
- Mark was registered by misrepresenting the facts or without sufficient cause.
- Mark was wrongly entered in the register and remaining there,
- Due to the recent amendments mark need a change/alteration/modification.
- The registered proprietor has not used the trade mark for a period of more than 5 years.
- Not renewed within due time of renewal.
- A trademark is liable to be removed from the register in case registration is obtained by fraud. Suppression of material facts or false statement are considered as two ingredients which the registrar or appellate Board must look into before initiate a proceeding for removal of mark from the register.
- Including certain goods or services which does not belong to same class or description for which the mark was registered.
- Not confirming one of more grounds specified in section 9(Absolute ground for refusal of registration) and Section 11(relative ground for refusal of registration) of the Act.
Rectification of trademark in India on grounds of non-use
Section 47 of the Trade Mark act deals with removal from register and imposition of limitations on ground of non-use.
A registered Trademark can be removed from the register wherein it has been registered in respect of goods or services, if an aggrieved person file an application to the Registrar or appellate Board on the basis of given grounds.
- The mark was registered Trademark without bona fide intention on the part of the owner in respect of which the gods and services to be covered with respect to the mark for which registration of the mark was done or in a case to which section 46 apply by the company concerned or the registered user, there was no bona fide intention on the part of the owner for using the mark in relation to those goods or services up to a date of 3 months before the date of filing of such application.
- That up to a date three months before the date of the application, a continuous period of five years or longer period has elapsed and there is no evidence substantiating the usage of the mark in relation to the goods or services by the proprietor nor even any intention to use such mark appears.
- Provided that in case of honest concurrent use or of any other special circumstances which justifies the usage of the identical mark by more than one proprietor in respect of same or similar goods or services, wherein the registrar allow subject to certain conditions and limitation.
Except where the applicant was permitted registration in the case of honest concurrent use, etc.
A mark identical or closely resembling mark with respect to the goods or services or where the Registrar/appellate Board/Tribunal is of opinion that permission must be granted to register such trade mark,Registrar/appellate Board/Tribunal may refuse an application under clause(a) or clause (b) with respect to any goods or services if it is shown to their satisfaction that, before the relevant date or period, as the case may be, the proprietor has used the mark bonafide with respect to,
- The goods or services or similar /same description
- Associated goods or services of that description
Where in relation to any goods or services with respect to which a trade mark is registered, the non use of trade mark are shown to have existed under the circumstances mentioned in clause (b) of sub section 1, in relation to goods to be sold or to be traded in a particular place in India permission under honest concurrent use to register a nearly resemble mark or identical mark with respect to the goods to be sold or to be exported or in relation to services , the tribunal permitting to register such mark.
- On application the tribunal/appellate board may impose such conditions or restriction for securing that registration shall cease to extend to such use.
An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates.
- Only aggrieved person is permitted to file a application for rectification of the register on the ground of non use of the trade. Exhaustive definition of the aggrieved person has not been given in the act, however the meaning can be interpreted from the judicial decision given by the court.
- It mean a person who is substantially interested in removing the mark from the register to have a gain to his advantage or who would substantially damaged if the mark remain in the register.Thedefinition includes a person who firmly believes his interest is being damaged by such registration or someone who earlier had applied for registration of the same mark and his registration is pending.
Ground of NON-USE by registered owner for a period of more than 5 years
What actually constitute use
- Using a mark continuously is a relative term and varies with case to case, the determination criteria of usage should not be rigid, it also needs to be judged on case to case basis.
- The courts in its several judgement pronounced that use does not mean actual use. Even though the goods in relation to which it require to be used is not inexistence, still promotional advertisement of the goods wherein the mark have been used can very well be fall within the definition of use.
- The aggrieved party could not argue on the ground of nonexistence of the goods. Courts in their judgement clearly said that use does not constitute actual or physical sale.
- Intention to use the mark for its existing or prospective good should be the deciding criteria.
What actually constitute non use
- Generally the burden of proving non use of mark is on the person who files the application for rectification of register.
- Such an application is filed if the mark has not been use for more than 5 years and 3 months and in such a case the owner may lose its right on the registered Trademark if he could not satisfy the court that the ground of application is baseless and the mark has been continuously used on or after the registration of the same. If the TM owner fails to establish the usage of the mark the Registrar or the IPAB would remove the mark from the register.
- In a recent case decided by the IPAB wherein the owner of the mark is require to prove its usage. He submitted a document which evidencing registration in various countries in support of its claim of usage. The IPAB rejected his contention and order themark to be removed from the register.
- A trademark could be expunged from the register if registration is obtained by fraud. Where the registration has been obtained by suppression of material fact or false statement it is known as registration obtained by fraud.
Procedure followed by the TMR for cancellation/rectification of proceedings
- On receipt of complete applications for rectification of register along with prescribed fees and statement of the fact. The registrarshall send the copy of the application along with statement of facts to the register proprietor of the mark asking him to file his counter statement in support of his statement.
- On completion of the filing of the counter statement by the registered proprietor, the Registrar, ask both the parties to submit their evidences.On submission of evidences, the matter is set for final hearing by giving both the parties equal opportunity to make oral submission if required on merits and the Registrar passes the final order.
Remedies available to the aggrieved party
- Under section 91(1) any party aggrieved by the order or decision of the Registrar can go for appeal before the Intellectual property appellate Board(IPAB) within three months from the date of order or decision sought to be appealed against is communication to him.
- No appeal shall be entertained unless the same has been file with the prescribed period of 3 months from the date of communication of order.
- The appeal may be admitted after the expiry of the appeal period prescribed by clause 1 of section 91of the Act, if the appellate Board has been satisfied that there was sufficient cause for not filing the appeal on time or there was reasonable ground, which prevented the party for filing the appeal in time the party.
- An appeal to the Board shall be in prescribed form and shall be verified in prescribed manner and shall be accompanied by the copy of the order or decision appealed against along with prescribed fees.
Procedure and power of the appellate Board
- The appellate Board shall not be bound to follow the procedure laid down in Code of Civil procedure-1908 but shall be guided by the principle of natural justice.
- Subject to the provisions of the Act and the rules made thereunder, fixing of the place and time of hearing the Appellate board shall have the power to regulate its own discretion
- The Board shall have the power of Civil Court under The code of Civil Procedure-1908 while trying a suit in respect of the following matter.
- Receiving evidence on oath.
- Issuing commission for examining of witnesses.
- Examining any public documents.
- Any other matter which may be prescribed.
Any proceeding before the Board shall bedeemedjudicial proceeding within the meaning of section 193 and 228 and for the purpose of section 196, of the IPC.
Bar of jurisdiction of Courts etc
No court or other authority shall have any authority in respect of matters specified under subsection (1) of section 91.
Remedies available against the order of the Board
- There is no provision for appeal against the order of the Appellate Board.
- However, the any person aggrieved by the order of the Board may file a writ petition under article 226 of the constitution the High Court against the order of the Appellate Board.
- The nature of the Writ is of review and not of appeal.
- Aggrieved person can file a writ petition under article 136 to the Supreme Court of India to invoke its jurisdiction.
Defence available against non-use which the Courts in India generally take into consideration while dealing a case for non use of trade mark
- General slack in the market.
- Lack of demand for the goods.
- Import Restriction.
Steps required to be taken to prevent rectification or removal applications from the register
- Renewal of the mark within due date.
- Not doing anything which will destroy the distinctive character of the mark.
- Not allowing the mark to remain unused for a period exceeding 5 years.
- Restrain others from infringing his mark.