India: Analytical Approach: Rights Of A Person To File Opposition And Rectification

INTRODUCTION:

The Trademark Act, 1999 has provided liberty to the person whose interest is hampered by the registration of a trademark to oppose the same. This right is provided under section 21 of the Act wherein anyone can oppose a trademark before the registration when the trademark is published in the Journal. In addition to the same, a person aggrieved can apply for the cancellation of registered trademark under Section 47 and 57 of the Act.

Although on a simple reading it seems that anybody can oppose or apply for the cancellation of a trademark but as per law the rights mentioned in these sections are provided to the people of different categories.

WHO CAN FILE OPPOSITION?

As per the language of section 21 any person can apply for the opposition of trademark published in trademark journal

"any person may, within four months from the date of advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration"

The term"any person" has been discussed in the case of P.N. Mayor V. Registrar of Trademarks¹wherein it was held that "any person" need not be only a prior registered trademark owner. Even a customer, a purchaser or a member of the public likely to use the goods may object to the registration of a trademark in respect of such goods on the ground of possible deception or confusion. Deception or confusion is a matter of public interest which is an important concern of the trademark law. The question of bona fides of an opponent does not generally arise, even though the opposition may be based on business rivalry or for other extraneous reason."

The trademark being a distinctive entity through which general public recognized the goods and service of one person from those of another hence the registration of a trademark is also a matter of scrutiny of the general public. If there is a chance that the registration of trademark would cause a slightest of confusion among a section of society then anybody can take cognizance of the same and file an opposition against the registration of the trademark. The right is provided under this section on the basis of principle of public interest and no trademark is allowed to be registered which is against the public interest in addition to the individual interest of the owner of a similar earlier trademark.

PERSON AGGRIEVED UNDER SECTION 47 AND 57:

Although the two sections i.e Section 47 and 57 provides rights to the 'person aggrieved' to apply for the removal of trademark but the reference in which the person aggrieved used in two sections are different as held by the hon'ble Supreme Court in case of Hardie Trading & Co Ltd v Addison Paints & Chemical Ltd² the Supreme Court held that "in our opinion the phrase "person aggrieved" for the purpose of removal on the ground of non-user under section 47 has a different connotation from the phrase used in section 56 (of the old Act) for cancelling or expunging or varying an entry wrongly made or remaining in the register.

In the latter case the locus standi would be ascertained liberally, since it would not only be against the interest of other person carrying on the same trade but also in the interest of the public to have such wrongful entry removed. It was in this sense that the House of Lords defined "person aggrieved" in the matter of Powell's Trademark³

Although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, in as much as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many person may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation.

Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trademark and wherever the trademark if remaining of the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved."

The cases under section 47 relates to the situation wherein the trademark is registered without any bona fide intention to use the trademark and trademark is not put to use since registration then a person aggrieved can file application for the removal of trademark on the account of non-use. In case of Wright, Crossely & Co's Trademark, Re⁴it was held that "in some possible way he may be damaged or injured if the trade mark is allowed to stand and by possible I meant possible in a practical sense, and not merely in a fantastic view.... All the cases of this kind, where the original registration is not illegal or improper, ought to be considered as question of common sense, to a certain extent, at any rate, and I think the applicant ought to show something approaching a sufficient or proper reason for applying to have the trademark expunged. It certainly is not sufficient reason that they are at loggerhead with the respondents or desire in some way to injure them"

The person aggrieved mentioned in section 57 relates to the category of people who might apply for the removal of trademark in public interest as the entry in the register might be wrongly remaining in the register due to some defects which have not brought to the notice of Registrar at the time of registration.

The person aggrieved under section 47 should be a person whose personal interest is hampered due to the presence of trademark in Register as the trademark might not be put to use since the registration and the proprietor also do not have any plan to use the same in future. In these type of cases if a bona fide user of a trademark wants to use the trademark and apply for the registration of the same then he can applies for the cancellation of trademark on the ground of non-use of trademark.

The rights provided to a registered proprietor are exclusive and he can file suit for infringement of trademark if someone use the same without its permission. At the same time rights it put a liability on the registered proprietor to use the trademark within a stipulated period of time and if he does not do the same then the trademark is liable to be removed from the register at the behest of a person who has genuine interest in the trademark. As held in the case of Registered Trademark of John Batt & co and In re Carter's Application for a trademark⁵wherein ROMER J. stated that "one cannot help seeing the evils that may result from allowing trademarks to be registered, broadcast, if I may use the expression, there being no real intention of using them, or only an intention possibly of using them in respect of a few articles. The inconvenience it occasions, the cost it occasions, is very large and beyond that I cannot help seeing that it would lead in some cases to absolute oppression, and to persons using the position they have obtained as registered owners of trademarks (which are not really bona fide trademarks) for the purpose of trafficking in them and using them as a weapon to obtain money from subsequent persons who may want to use bona fide trademarks in respect of some classes in respect of which they find those bogus trademark registered."

The definition of person aggrieved under section 47 is further enhanced by the Hon'ble Supreme Court in case of Cycle Corporation of Indian Limited v T I Raleigh Industries Pvt Ltd And others⁶wherein it was held by Hon'ble Supreme Court that "the expression "by any proprietor" in section 47 should not be restricted to user by the proprietor or registered user who should also include bona fide or authorized user. The legislature did not intend registered proprietor to be deprived of their property at the instance of user whose use is unregistered. The expression, therefore, should not be restricted to user by the proprietor himself or any registered user but should also take into account bona fide authorized user".

The above discussion and case laws makes it quite clear that the rights provided opposing party under the Trademark Act, 1999 in relation to the opposition and cancellation of trademarks are different in substance. The trademark at the time of publication is a matter of public importance hence the public at large has rights to oppose the same whereas in case of cancellation of a registered trademark, rights are provided to the people in reference to the specific rights hampered due to registration of trademark. Although the rights under section 57 are much wider in scope than the rights provided under section 47 but the same are quite limited when we compare the rights provided under section 21 i.e. opposition of trademark.

CONCLUSION:

The trademark, being an important asset in the contemporary business structure, has multifarious use in establishing a brand but the rights provided under the Act are subject to strict check and balances in order to avoid the misuse of the trademark. Once a trademark is applied for registration, these check and balances start their operation in order to make sure that only genuine trademarks would be provided protection. The check and balances are operated through different set of people whose interest might be hampered due to the registration of a trademark hence they can object the registration of trademark and can also file for the cancellation of a registered trademark. Although, the Act provide rights to object the registration or cancellation of trademark to a person but it cannot be a same person in all the cases. The Act has categorically define that who can apply for opposition and who can file for the cancellation of a registered trademark.

Footnotes

1. AIR 1960 CAL 80

2. AIR 2003SC 3377

3. Powell's trademark Re (1894) 11 RPC4

4. (1898)15 RPC 131 at p 133 per Romer J. Affrimed on appeal (1898) 15 RPC 377 (CA)

5. (1898) 15 RPC 262, 266

6. AIR 1996 SC 3295

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.