Introduction of Rectification

rectification

Legislation in all countries generally makes provision for removal of trademarks from the Register to either correct wrongs or to take note of changed  market situations. This process is referred as rectification of the Register. The international agreements and treaties sometimes require mechanism in national legislation for cancelling registration in relation to certain specified reasons. It is necessary to have such provisions so that the adverse effects of the trademark registration, if any, on the trademark rights of the other persons including nationals of other member countries may be redressed by cancelling the registration of the trademark , or removing it from the Register. The importance of the rectification provision got diluted in India, because the Courts opted to issue injunctions against the registered trademarks in passing off actions. This chapter is divided in four sections  1) Grounds for rectification  2) Grounds validating the trademark 3) Marks becoming public Juris or Generic names and 4) removal of trademark for non-use. The grounds of removal can conversely be appreciated as necessary conditions for continuance of the trademark in addition to initial registration requirements. Compliance with these grounds is necessary for maintaining the trademarks on the Register. An initially irregular trademark registration can meet two factors – the trademark may be removed or there are certain provisions of law which may cure the defects in the initial registration. Section 31(2) and section 32 are important in this regard.

Shift of jurisdiction to IPAB:

The journey of trademark law from the 1958 Act to the 1999 Act saw shift  of jurisdiction in relation to law  of rectification. The jurisdiction got shifted from ‘High court having Jurisdiction’ to the Intellectual Property Appellate Board (IPAB) and its benches . The rectification may be filed before Registrar or the relevant bench of IPAB. The expression IPAB and the court may sometimes be used interchangeably because courts were predecessors and the law laid down by them holds ground.

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Different expression for rectification:

Different expressions have been used the result of which mostly is the same, e.g., rectification, removal, expunged, cancelling, taken off etc. Section 57(1) speaks of cancelling or varying the registration of the trademark; the term rectification is used in the context of rectification of an error or defect in any entry in the Register for which an order for expunging or varying the entry may be made. ‘Removed’ is a term used in section 47 in relation to trademarks about which an order of expunction is made. Section 32 enacts provision seeking to save a trademark from the possibility of being declared invalid. These expression including removal of trademark may be appreciated in the same light, except where the context does not permit, e.g., dichotomy is drawn in relation to stay of proceedings.

Circumstances when Rectification desired:

The Rectification of the Register may be possible under section 57 in the following circumstances

  • On the application of an aggrieved person
  • The tribunal of its own motion, after giving notice and hearing to the parties concerned can also be rectify the Register.
  • The Register may also be rectified when any proceeding is pending before the court and a question arises about expediency of rectification of the Register.

Rectification for protection of Public:

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In considering section 57(2) and section 9(2) the primary duty of the court or Appellate Board is towards the public and the maintenance of the purity of the Register. When a case is sought to be made out, that a particular trademark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation, as it is between the party defending his right to a particular trademark and the public. The duty of the Board/court in the circumstances is always to protect the public. The duty of the Board/Court in the circumstances is always to protect the public, irrespective of any hardship or inconvenience it, may cause to the particular party whose trademark is likely to deceive or cause confusion. The court and the Registrar are duly bound to protect the public as well as resolve the conflicting rights of trademark owners and to maintain the purity of the Register.

Purity of the register:

In considering an application for rectification under section 57(2), the court has to consider not merely the conduct of the parties, but also the question of purity of the Register in public interest, whatever be the ground on which the rectification was sought, especially where the marks are identical. Where the original trademark registration is neither illegal nor improper, an application for rectification must show sufficient or proper reasons for applying the expunction of the trademark from the Register of trademarks. Mere fact that the concerned parties are at loggerheads in trade is not a sufficient ground for giving locus standi to maintain the Trademark application. Maintenance of the purity of the Register has been emphasized by the English and Indian courts time and again. The purity of the Register of trademarks is of much importance to trade in general; quite apart from the merits or demerits of particular litigants. If on a motion the attention of the court is called to an entry on the Register of a trademark which cannot in law be justified as a trademark, it seems that the court’s duty is, whatever the demerits of the applicant, to purify the register and to expunge the illegal entry in the interest s of the trade. IPAB has shown a new trend recently when it rectified VEGABOND which was registered a in favor of a party from Italy whereas the actual owner was using it in 41 Countries and also had international registration. In November 2013, Dr. Reddy’s Laboratories Ltd. has won a case relating to a trademark dispute with New Delhi based on Reddy Pharmaceutical Limited. The IPAB ordered the removal of the registered trademark ‘Reddy’ as it had adopted the mark dishonestly.

Correction of Register

rectification

The Register is authorized to correct the trademark Register by virtue of section 58 of the 1999 Act for the following purposes, which reads:

  • Correcting any error in the name, address or description of the registered proprietor of a trademark, or any other entry relating to the trademark;
  • Enter any change in the name, address or description of the person who is registered as proprietor of a trademark;
  • Cancel the entry of a trademark on the Register;
  • Strike out any goods or classes of goods or services from those in respect of which a trademark is registered.

The Registrar is further authorized to make any consequential amendments or alteration in the certificate of trademark registration.

Entry wrongly remaining on the Register:

In a case the Board said, as the respondents started using ‘Mountain Dew’ brand again since 2003, the required period of 5 years three months has not been fulfilled for removal of the trademark. As to the entry wrongly remaining on the Register, the distinctiveness of the MOUNTAIN DEW mark is beyond doubt as it is used throughout the world from 1940.Literal meaning of the word has nothing to do with the goods for which it is used. Thus, it is not descriptive of the products being sold there under. It is a unique combination coined arbitrarily which has assumed popularity over a long period for the goods for which it is being used.

Using an Abandoned Trademark:       

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In Ahmed Oomerbhoy versus Gautam tank, 2008 (36) PTC 193 (del), interim injunction was granted to the plaintiff’s restraining the defendants from using the registered trademark ‘Super Postman’ in respect of edible oils, as it was found deceptively similar to ‘POSTMAN’, also used for the same goods of the plaintiff. The court held that the trademark ‘Postman’ for groundnut oil could not be taken as common English word, invented or generic as averred by the defendants; was worthy of protection. Generic words are those that have come to b understood as genus of which the particular product is a species.  ‘Postman’ for courier services may be generic word but not for groundnut oil. For the groundnut oil, ‘Postman’ is an arbitrary word and hence good trademark. In relation to the argument under section 28(3), the court took the view that though the plaintiff cannot file an infringement action because of bar under section 28(3)and 30(1)(d), but they could very well initiate a passing off action against the defendants.

Grounds for rectification : Grounds in Section 57(2):

Section 57(2) lays down the following grounds in general form, the specifies of which are spread through the whole of the Act and are applicable for the purpose of section 57(2). If there is:

  • the absence or omission of any entry from the Register, or
  • any entry made without sufficient cause, or
  • any entry wrongly remaining on the Register, or
  • any error or defect in any entry in the Register;

the same may be varied, expunged or entry be made by the tribunal as stated above.

Application by Aggrieved Person

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The rectification application can be filed only by an aggrieved person as against opposition to the registration of which can be filed by any person. The expression “person aggrieved” has been literally interpreted in various cases. It includes a person who has used the trademark in question before its registration for another and also a person against whom an infringement action has been taken or threatened. The words ‘without sufficient cause’ have a clear relationship with original trademark registration. In re Powel’s Trade Mark, 11 RPC 4, it was held that wherever it can be shown that the applicant for rectification is in the same trade as the person whose registered trademark is sought to be removed, and he is not lawfully able to do certain things, he has the locus standi. He could not lawfully do these things because of the existence of the trademark on the Register. Such a person has a right to be heard as an aggrieved person. The interest should be substantial.

The fact that the trader deals in the same or in a similar class of goods or services and could use the impugned mark is sufficient, as evidence of his being aggrieved. The registered proprietor could and is allowed to show that there is no reasonable probability of the objector using the trademark, although he was free to do so. The test is that the persons who are in the same way or the other substantially interested in having the mark removed from the Register are persons aggrieved. In the event of the mark remaining on the Register, the persons who  would be substantially damaged, also aggrieved persons.

When the registered owner of the mark  ‘Prestige’ had an intention to use the same mark for textile and made an application for rectification against the registration of PRESTIGE for textiles, the Madras high court did not oblige the petitioner who was the registered owner of the trademark  “PRESTIGE” for non-electric cooking and kitchen utensils etc., The respondent had registered the same trademark for textiles. The petitioner filed an application for rectification of the Register under Section 46 of the 1958 Act on the ground that he was intending to use the same for textile. The question was whether he could be treated as an aggrieved person. Since, he had not used the trademark he could be treated as an aggrieved person. Since, he had not used the trademark but only had an intention to use it, he was held not to be an aggrieved person.

Substantial Interest:

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The  court took the view that mere assertions that the petitioners had intention to use the mark did not give rise to the cause of action so as to maintain this petition by calling themselves as aggrieved. There was no material that the petitioners had a substantial interest in getting the mark removed from the Register. There was no primary case to hold that they were substantially damaged by the respondents registered mark remaining on the Register. In all cases the person filing an application for rectification must also show that he is a person aggrieved has a right to file the trademark application. Very crucial question that requires consideration is when and which person can be called a ‘person aggrieved”. This again may give rise to a variety of considerations. But in any case, once a suit for infringement of a mark has been filed, the person against whom such suit is filed certainly becomes a person aggrieved when he comes to know of such suit.

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