IPR: TRADEMARKS: Trademark Rectification in India

 Trademark Rectification in India

Filing of Trademark Rectification in India

Trademark Rectification can be filed in India on grounds of contravention or failure to observe a condition of the trade mark already entered in the Register or an error in registering the trade mark.

Section 57 of the Trade Marks Act, 1999 provides for the grounds for Rectification of the Register. An application for rectification or cancellation of a trademark can also be filed on the grounds of non-use of the trademark for a prescribed period of time after the registration of the trademark

An application for rectification of a registered trade mark is required to be filed before the same Trade Marks Registry where the application for its registration was filed.

Grounds for Trademark Rectification in India

Section 57 of the Indian Trade Marks Act, 1999 (hereinafter referred to as "Act") provides for the grounds for Rectification of the Register:

• Clauses (1) and (2) of Section 57 of the Act provides that when any person aggrieved of any entry in the Register of Trade Marks makes an application to the Appellate Board or to the Registrar, the Tribunal may take such steps for cancellation or variation of the registration of the trade mark on the ground of any contravention or failure to observe a condition. The right to file an application for rectification under Section 57 is a statutory right conferred upon a party who is aggrieved by an entry made in the Register. The said right is circumscribed by certain requirements such as:

• Contravention or failure to observe a condition entered in the Register in relation to the registration of the mark (Section 57(1)).

• The Register suffers from the absence or omission of an entry eg a disclaimer, a condition or a limitation on the registered mark: (Section 57(2)).

•The entry made in the Register was made without any sufficient cause Le. registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered mark etc. (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 Le. It is contrary to some of the provisions of the Act or is likely to cause confusion among the public and trade: eg. The mark is in contravention of Sections 9 and 11 of the Act (Section 57(2)).

• The renewal fees have not been paid

• Clause 4 of 57 provides that the Tribunal i.e, the Registrar or the Appellate Board, after giving a notice as well as an opportunity of being heard to the concerned parties, may either cancel, vary, make or remove the entry in question

Under the Section 31(1) of the Act, the original registration of the trade mark shall be prima facie evidence of the validity of the mark in all legal proceedings relating to a trade mark (including in an application under section 57)

• An application for rectification of a registered trade mark in required to be filed before the same Trade Marks Registry where the application for its registration was filed. The procedure before the Registrar is prescribed under Rules 97 to 100 of the Trade Marks Rules, 2002. An application under Section 57 is to be made in duplicate on Form TM-O (in the case of a collective mark or a certification mark). The application is to be accompanied by a statement of case, setting out the nature of the Applicant's interest. facts upon which the case is based and the relief that is sought.

• Although the Registrar of Trademarks is empowered to bear rectification petitions against registered trademarks, in cases where an Infringement suit is pending before a civil court and where the defendant in the suit is contesting the validity of the plaintiff's trade mark, the power to hear applications for rectification of such trademarks vested only with IPAB and not with the Registrar

Precautions to be undertaken in order to prevent the rectification or removal of a mark from the register.

• Renewal of the said mark from time to time

• Preserving the distinctive character of the mark and avoiding it from becoming deceptive.

• Not keeping the mark unused for a period exceeding five years.

Case Laws

In a landmark judgment, Mr. B.V. Elargo Himachalapathy vs. M/s. Rank Xerox Limited & Others [decided on September 21, 2012) the IPAB rejected four out of seven rectification applications of BV. Elango Himachalapathy filed against the registration of "XEROX as a trade mark on the grounds of mark becoming generic B.V. Elango Himachalapathy, owner of a photocopying shop initiated rectification proceedings in the Appellate Board after a suit was filed by Xerox Corporation against them in 2004. Elango contended that the wordi "XEROX was now used as a common word and has become synonymous with photocopying. Thus, it has come to be used in a generic sense and has lost its distinctiveness and by acquiescence it has fallen into the public domain

Hon'ble Mrs. Justice Prabha Sridevan observed that "XEROX" had been periodically renewed, without any objection or opposition by any party and that at least from 2003, Xeraic had begun to aggressively protect its mark by campaigning it with advertisements like 'If you use Xerox the way you use Zipper, our trade mark could be left wide open" and "If you use Xerox the way you use Aspirin, we get a headache:

IPAB noted that though the trade mark "XEROX" had been used as a common term by the public, however Xerox Corporation was the R owner of this sald trade mark as was evident from its renewal and continuous use. Further, it was observed that the competitors knew of the existence of the mark "XEROX", and had their businesses been hampered by the continuing use/existence of the mark "Xerox in the Register, they would have protested or taken an action.

The Board therefore held that “…. But we find the long continuous existence on the Register and the public acceptance of the trade mark when pointed out are factors which weigh with us in our exercise of discretion."

Thus, the judicial trend, while dealing with the provisions of rectification under Section 57. has always been to keep all facts of each case under due consideration while deciding the matter.