The trademark laws in India provide bona-fide
proprietors of marks two chances to prevent another party from
benefitting from the registration of a deceptive/identical mark.
The first chance occurs when the mark is advertised before
registration, in the trademark journal. If this chance is not
availed for any reason there is another lifeline. After
registration is granted, a rectification application can be filed.
A rectification application can be filed by an 'aggrieved
person' alone whereas; an opposition can be filed by any
The definition of an 'aggrieved person' includes a party
who is directly or indirectly affected by the registration of the
mark. Recently the shoe company Adidas filed for rectification and
removal of the mark 'RESPONSE', registered by another party
(Respondent). Adidas claimed that it had ownership of the mark
'RESPONSE' for its shoes, in U.S.A and Germany. Adidas'
case was that the Respondent had not renewed its mark since 2011.
Further, the Respondent was not present for the proceedings before
the IPAB thus, showing that the Respondent had no interest in
pursuing the matter or defending its mark and thus justifying
removal of the mark from the Register.
The IPAB rejected the rectification application on the grounds
that to establish oneself as an 'aggrieved person' in an
ex-parte hearing, the Applicant has to show their use and
reputation by placing sufficient bills and invoices on record for
the IPAB's perusal. It was held that Adidas had failed to show
its use of the mark 'RESPONSE' and therefore, could not be
considered to be as 'person aggrieved' as a result, they
were unable to show confusion or deception in relation to the mark
in the minds of the public. Therefore, IPAB dismissed the
application. This interpretation of the term 'person
aggrieved' by the IPAB was rejected by the Delhi High Court.
The Court ruled that the term 'person aggrieved' was of a
broad ambit and includes a party that had been refused registration
of its mark due to prior registration of a similar mark by another
proprietor or what mark was opposed. The IPAB's finding that
'even when the marks and goods are identical, there is no
person aggrieved' was held to be contrary in law. The
Court further observed that, though the IPAB had ruled that there
was no evidence as to the use of the mark 'RESPONSE' by
Adidas, it had simultaneously noted that the use, if any by Adidas,
was after 2005. This finding was held by the Court to be contrary
to facts and therefore, the IPAB's decision was set aside and
the matter was remanded back to IPAB for re-consideration.
This interpretation by the Court is a breather for Adidas as
well as many other parties that have applied for rectification of
marks before the IPAB and are currently not using their mark in
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