The Intellectual property Appellate Board (the Board) says NO. The bench of J. Prabha Sridevan and Ms S. Usha, in an interesting order, held that that the mark 'Xerox' does not deserve to be removed after almost 50 years of continued existence on the register without challenge and a user proof of almost 44 years.

The seven rectification petitions' main contention was that the word Xerox has now become publici-juris due to its usage as a synonym for photocopying. Also that the word is in use in all Indian languages and with the passage of time, the applicant emphasized, the mark has lost its distinctiveness along with its value as a trademark consequently falling into public domain.

What clinched the deal for Xerox Corporation was the evidence that the public was conscious of the ownership of the trademark. The evidence showed that there were uniform acknowledgements from all those who had used the word Xerox, that their use was inadvertent and that they would refrain from doing anything in violation of the trademark rights. The Board also took into view that the mark Xerox has been on the register for a long time and was renewed periodically and put in use continuously. From the angle of the rights of competitors, it was rightly construed by the Board that their awareness and absence of any complaints from them about the existence of the mark did not leave any scope of injury to them by the continuance of the exclusivity since anyway they were not using the word Xerox to describe their goods. It is pertinent to note here that the law regarding publici juris is laid down in Ford v. Foster, (1872) 7 Ch A 611 at p. 623 ("Eureka" case) (Z13). The test to determine whether a trademark has become publici juris is stated in the following words by Mellish, L. J.:

"... the test must be whether the use of it by other persons is still calculated to deceive the public, whether it may still have the effect of inducing the public to buy goods not made by the original owner of the trade mark as if they were his goods. If the mark has come to be so public and in such universal use that nobody can be deceived by the use of it, and can be induced from the use of it to believe that he is buying the goods of the original trader, it appears to me, however hard to some extent it may appear on the trader,.... the right to the trademark must be gone"

Another very pertinent reasoning by the Board was that the applicant did not push any evidence to show that the generic nature of the mark Xerox will affect his business in terms of production, consumer service and the competitors' perception.

Finally on the proof of user as claimed, the Board opined that Xerox Corporation has proved its user almost to the date of user as claimed in the particular facts of the case, however the user as proved relates only to four rectification petitions. As a result three out of seven rectification petitions were allowed.

Lately, the decisions of the Intellectual Property Appellate Board have been emphasizing on establishing 'User' of a mark as claimed in deciding rectification petitions. In the recent case of Times Publishing House Ltd vs. Financial Times, The Financial Times Ltd., UK had claimed that they had been using the impugned mark from 1948 when the application was made in 1987 but due to insufficient evidence on date of user, the Board allowed the rectification petition of Times Publishing House Ltd. Singling out the present dispute as standing on a different footing because the date of application in 1963 and the date of user as 1961 being almost contemporaneous, the Board concluded that the registered mark Xerox after almost fifty years (1963-2009) of continued existence on the register without challenge and proof of almost forty-four years user (1965-2009) does not deserve to be removed.

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