Who can file Application for Removal/Rectification of Trade mark in India?
Sections 47 and 57 of the Indian Trade marks Act provides for the removal and rectification of a registered Trade mark from the Register of Trade marks on an application made by ‘any aggrieved person'.
In order to file an application for removal or rectification of the registered Trade mark, the Applicant would need to prove that he is aggrieved by the registration of the Trade mark.
Where can an Application for Removal/Rectification of Trade mark be filed in India?
An application for removal or rectification of a registered Trade mark is required to be filed before:
- The same Trade Marks Registry where the application for registration was filed;
- The Intellectual Property Appellate Board in Delhi (for Delhi jurisdiction) and Chennai (for all other jurisdictions).
Rectification Application with the Intellectual Property Appellate Board (IPAB)
Rectification before the Trade Marks Registry
Rectification Application along with the Affidavit and supporting documents is filed on Form 1.
Rectification Application is filed on Form TM - 26 or TM-43 along with the statement of case.
The Affidavit along with the supporting documents has to be filed along with the Rectification Application.
The Affidavit along with the supporting documents in this case has to be filed after the counter statement i.e. in the third stage.
The order passed by the IPAB can be challenged in the Hon'ble High Court.
The order passed by the Registrar has to be challenged in the IPAB first and then in the Hon'ble High Court.
On what Grounds can a Registered Trade mark be Removed in India?
Section 47 of the Indian Trade marks Act provides for the removal of a registered Trade mark from the Register of Trade marks on an application made by ‘any aggrieved person' on the following grounds:
- The Trade mark was not registered with a bonafide intention and there has been no bonafide use of the Trade mark upto a date three months before the date of the application;
- Upto a date three months before the date of the application, a continuous period of five years from the date of issuance of the registration certificate or longer has passed during which there was no bonafide use of the registered Trade mark.
However, Section 47(3) provides for special circumstances under which non-use of the registered Trade mark may be excused, i.e. if the non-use of a Trade mark is due to special circumstances in the trade like restrictions on the use of the Trade mark in India imposed by any law or regulation and not any intention to abandon or not use the Trade mark.
In a Delhi High Court judgment, Pfizer Products Inc. v. Rajesh Chopra, the plaintiff filed a suit for infringement and passing off action against the defendant wherein the propriety rights of a drug sold under the name of “Geodon” by the defendant were challenged. The plaintiff had registered the same in India on July 18, 1996. The defendant, on the other hand, claimed proprietorship of “Geodon” and use of the Trade mark since June 01, 2003. One of the major contentions of the defendants was that the plaintiff had failed to show use of the Trade mark in India since its registration and hence the Trade mark was liable to be struck off from the Register so that the defendant could legally market his product under the concerned Trade mark. The balance of convenience was in favour of the plaintiff as it is a global player, selling the drugs by this name in over 40 countries. Even though the sale of the concerned drugs in India could not be established, the importance of wrongfully using the Trade mark of such a global player in the field of medicine was established. Hence, the Trade mark was not removed from the Register.
On what other Grounds can a Registered Trade mark be Removed/Rectified in India?
Section 57 of the Indian Trade marks Act provides for the removal/rectification of a registered Trade mark or rectification of the Register of Trade marks on an application made by ‘any aggrieved person' on the following grounds:
- Any contravention or failure to observe a condition of the Trade mark entered in the Register.
- Any absence or omission of an entry in the Register, e.g. a disclaimer, a condition or a limitation on the registered Trade mark.
- Any entry made without any sufficient cause in the Register, e.g. registration was obtained by fraud or misrepresentation of facts or the Trade mark registered was similar to an already registered Trade mark.
- Any error or defect in any entry in the Register.
- Any entry wrongly remaining in the Register, e.g. it is contrary to some of the provisions of the Act or is likely to cause confusion amongst the public and trade.
In case of Pendency of a Suit
Although the Registrar of Trade marks is empowered to hear applications for rectification against registered Trade marks, 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 Trade marks vests only with the Intellectual Property Appellate Board and not the Registrar.
Precautions to be taken in order to prevent the rectification or removal of a registered Trade mark from the register:
i. Renewing the Trade mark from time to time.
ii. Preserving the distinctive character of the Trade mark and avoiding its becoming deceptive.
iii. Not keeping the Trade mark unused for a period exceeding five years.
iv. Taking prompt action against or restraining others from infringing the Trade mark.
In a landmark judgment, Mr. B.V. Elango Himachalapathy vs. M/s. Rank Xerox Limited & Others, the IPAB rejected four out of seven rectification applications of B.V. Elango Himachalapathy filed against the registration of “XEROX” as a trade mark on the grounds of the Trade mark becoming generic. B.V. Elango Himachalapathy, owner of a photocopying shop, initiated rectification proceedings in the IPAB after a suit was filed by Xerox Corporation against them in 2004. Elango contended that the word “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, Xerox had begun to aggressively protect its Trade 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 owner of the said trade mark as was evident from its renewal and continuous use. Further, it was observed that the competitors knew of the existence of the Trade mark “XEROX” and had their businesses been hampered by the continuing use/existence of the Trade mark “XEROX” in the Register, they would have protested or taken action.
The IPAB, therefore, held that “…But we find the long continuous existence on the Register and the public acceptance of the Trade mark rights 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.