When an Application for Rectification of Trademark is Filed: Lawyers Advice
Trademarks are unique names, symbols, phrases or designs that can be represented graphically and can differentiate the business, product or service, of one company or person from that of others. The registration of a trademark of a product or service is significant for preventing any misuse of the same, thereby protecting the goodwill and reputation of the business. Rectification is a legal process through which any error or omission made in the details of the recorded trademark in the trademark registry, is corrected. The Trademarks Act, 1999 provides for rectification of registered trademarks in cases where the mark is wrongly registered or has remained in the trademark registry even after expiry.
An application for rectification can be filed by an aggrieved person who is affected by the concerned entry provided in the trademark registry, on the basis of grounds mentioned in the Trademarks Act, 1999. The grounds are:
i. The mark was registered through misrepresentation of facts or without sufficient cause;
ii. The mark was wrongly entered, and still remains in the register;
iii. The mark needs to be changed, altered or modified owing to the recent amendments in law;
iv. The mark has not been used by its registered proprietor for more than five years;
v. The mark has not been renewed within the due period;
vi. A trademark could be removed from the register if the registration is attained by fraud; mainly, when the registration has been obtained by suppressing material facts or false statements;
vii. To include goods or services which does not fit into the same class or description under which the mark was registered;
viii. Not conforming with one or more grounds mentioned in Section 9 and Section 11 of the Trademarks Act, 1999.
The intention behind the provision under Section 47 to remove a trademark registered without bona fide intention to use it, is to ensure that the intention to use a trademark sought to be registered is genuine and real. Trademark registration involves the conferring of a valuable right. It also seeks to prevent trafficking of trademarks. Therefore, a person who has no bonafide intention to use a mark should not register it, in order to prevent another person from using the same. This observation regarding the intention behind Section 47 of the Trademarks Act, 1999 was made in the case of Kabushiki Kaisha Toshiba v. Toshiba Appliances Co. (AIR 2009 SC 892).
Chapter VII of the Trademark Rules, 2017 provides the procedure for the rectification of register. An application for trademark rectification can be filed before the Trademark Registry in the concerned trademark jurisdiction (Mumbai, Chennai, Kolkata, Delhi or Ahmedabad) where the trademark registration application was originally filed. According to Rule 97 of the 2017 Trademark Rules, the Application shall be made in Form TM-O along with a statement which provides the nature of the Applicant’s interest, the facts on the grounds of which he files the application and the relief he seeks. Further, the Application can be submitted before the Trademark Registry or Intellectual Property Appellate Board. The Registrar, on receiving the Application, then proceeds to serve a copy of the application and statement of facts to the registered proprietor to file a counter-statement. The counter-statement has to be filed within 2 months (extendable by 1 month) to the registry. Once the counter-statement is filed, the Registrar shall require both the parties to submit their evidence, following which, the matter is set for hearing. Both the parties are given equal opportunity to make oral submissions, if required. The hearing officer will then communicate the decision made to the parties and will also provide the reasoning for the same.
An appeal can be made before the Intellectual Property Appellate Board by any party who is aggrieved by the decision made by the Registrar under Section 91(1) of the Trademarks Act, 1999. This Appeal has to be made within three months from the date of communication of the order.
Section 57 of the Trademarks Act, provides for the powers of the Appellate Board as well as the Registrar in regards to the rectification of the register.
Additionally, if the registered proprietor himself wants to correct, alter or change any part of his trademark, he can also rectify the same. This is provided under Section 58 and 59 of the Trademarks Act, 1999. Under Section 58, the Registrar can make the following corrections if the registered proprietor applies for the same:
i. Correction with respect to error in the name, address and description of the registered proprietor or any other error mentioned in regard to the registered trademark;
ii. Entering any change in name, address or description in relation to the person registered as the proprietor of the trademark;
iii. Cancellation of an entry on the trademark registry;
iv. Remove any good(s) or service(s) from the list of goods and services for which the trademark was registered.
Under Section 59, the registered proprietor may apply for any addition or alteration to the trademark in any manner that does not substantially affect the identity of the trademark. The Registrar may accept it or even refuse the same on grounds he thinks fit. The Registrar may advertise the same in any manner he deems fit, enabling any person to give an opposition notice to the Registrar within the prescribed time limit. The Registrar then decides the matter after hearing both the parties.
Some important case laws on trademark rectification can be discussed as follows:
In the case of V.P. Balaji v. Apple, Inc. and Ors. (ORA/103/2013/TM/DEL), a petition for rectification of trademark “IPHONE” was made. It was held by the Intellectual Property Appellate Board that the Discretion for removal of trade mark cannot be exercised in favour of a party which is not the proprietor of trade mark. The trademark “iFon” of the Petitioner could also not be treated as distinctive. The rectification application was held to be false and frivolous.
The Gujarat High Court in the case of Pathiath Babu Rajendran and Ors. v. Asst. Registrar of Trade Marks and Ors. (Special Civil Application Nos. 10329 of 2007 and 1922, 1923 and 1927 of 2008) held that since the Respondent had established non-user of the trademark “PRIYA”, for the statutory period provided under Section 46(1)(b) of the Trademarks Act, 1999, the trademark was liable to be removed for the Trademark Register through rectification.
In the case of Indo Shell Cast Private Limited, a Company incorporated under the Companies Act, 1956 v. The Registrar of Trade Marks and Indo Shell Mould Limited (M.P. No. 101/2007 in ORA/48/2006/TM/CH and ORA/48/2006/TM/CH), it was held by the Intellectual Property Appellate Board that trademarks which are registered without bonafide intention to use the same are liable to be removed from the register through rectification. It was also held that the onus of proof lies on the person who seeks to have the trademark taken-off from the Register.
In Khoday Distilleries Limited v. The Scotch Whisky Association and Ors. (Civil Appeal No. 4179 of 2008 (Arising out of SLP (C) No. 21367 of 2007)), the Supreme Court held in the rectification of trademarks, the action of delay by Respondents in filing application has been barred under the principles of acquiescence and/or waiver. It was also stated by the Court that if the Plaintiff knew about, and let the Defendants build up a business until it had become essential to destroy it, then the Plaintiffs would be stopped by acquiescence.
The necessity of rectification procedures is to redress any adverse effects of the trademark registration, on the trademark rights of persons, by way of cancellation of registration of the trademark or removing it from the Register. Rectification can also be made under the application of a registered proprietor stating that certain details regarding the trademark and its ownership is entered differently in the register. The change/alteration made to this entry is important so that it does not affect the business and reputation of the registered proprietor of the respective trademark. At the same time, it is also important to take proper precautions in order to prevent the rectification or removal of the trademark from the trademark register. This involves positive actions to renew trademark from time to time and modification of trademarks according to recent laws, among others.
Authored By: Adv. Anant Sharma & Anjana Gopinath