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
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
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