Rectification of the register is a proceeding in which a party seeks to remove a registered trademark from the register. In India, Section 47 of the Trademarks Act lays down two scenarios regarding removal of a registered trademark, they are;
- if it is proved that the trademark was registered without any bona fide intention of use on part of the owner. More often than not, as part of trademark searches that we conduct, we come across many applications which have been filed in all the 45 classes when the mark is actually used for one or two classes only. This is a defensive registration and the Court has held in various cases that such registrations should not be encouraged.
- if the trademark hasn’t been used for a continuous period of 5 years from the date of registration of the mark and three months prior to filing the application for registration. So in effect, if the mark has not been used for a period of 5 years and 3 months, then any aggrieved person may file for rectification proceedings.
So in the first type of case if a person can show that the applicant had no intention of actually using the mark, they can file a petition to cancel the mark, and in the second scenario, even if there was some initial usage, for a continuous period of 5 years after registration of the mark, if the mark had not been used an application for rectification can be filed.
Who can file for rectification of the register?
Any aggrieved person may file for rectification of the register on grounds of non-use of the trademark. Though the meaning of “aggrieved persons” hasn’t been explicitly defined in the act, it has however been interpreted by the Courts to mean persons who are in some way or the other substantially interested in having the mark removed from the register or persons who would be substantially damaged if the mark remained
So an aggrieved person includes person who believes that he is being damaged by the registration; someone who has an earlier pending trademark for the same mark; the owner of an earlier registered trademark; basically, any person who is in some way or other substantially interested in having the mark removed and includes persons who are substantially damaged or prejudiced if the mark remained on the register.
Can it be filed anonymously?
No, it cannot be filed anonymously since the onus to prove that he/she is actually affected, proper evidence reflecting that the mark hasn’t been used by the trademark owner needs to be submitted in the course of proceedings by the “aggrieved person”. This is mainly to ensure that a random third party whose rights is not affected in any way does not get away with unnecessarily removing a valid trademark from the register.
What is use?
The determination of whether a mark has been continuously used is a matter of fact which varies from case to case. In relation to non-use of trademarks, “use” has been defined to mean: “the use of the printed or any visual representation of the mark upon, or in any physical or in any other relation whatsoever, to goods or services“. Moreover, with regard to the term “use” the Courts have stated that, the term ”use” does not necessarily mean and imply actual physical sale and it is now well settled that even mere advertisement without having even the existence of the goods can be said to be an use of the mark.
So for instance, the mark has been registered but hasn’t been manufactured yet, nevertheless the trademark owner has started to promote the mark by way of advertisements or TV commercials, which according to the courts, is usage of the mark though the mark hasn’t been used as such.
What is non-use?
If the owner of the mark hasn’t used the mark for more than 5 years and 3 months, then he may lose his trademark rights in such rectification proceedings or opposition proceedings. While generally the onus to prove non-use is on the person who files the application for rectification, however the onus might be shifted to the trademark owner in the course of hearing and if he fails to establish usage, his mark will be liable to be removed from the register.
This was what was held by the IPAB is a recent case where the respondent (trademark owner) was to provide for evidence of usage. The owner submitted a document listing registrations in various countries as usage which was rejected by the IPAB and the mark was ordered to be removed as the evidence of usage was not sufficient.
How to file a rectification proceeding in India?
An application for rectification can either be made before the Registrar or the Appellate Board. An order passed by the Registrar is appealable within 90 days to the IPAB which is not appealable. In order to challenge this order, a writ petition can be filed before the High Court. If the application is directly filed before Appellate Board, it can then be challenged by filing a writ petition in the High Court.
Apart from submitting the prescribed forms and the fees the application is to be accompanied by a statement of case which basically sets out the nature of applicant’s interest, facts upon which the case is based and the relief sought for.
What is the effect of rectification?
Removal of the mark from the trademark register unless proper evidence of usage is submitted by the trademark owner.
It’s not merely enough that you have applied for and registered a trademark, the main purpose of the law is to protect people who have been using the trademark. It’s not some right that you can just sit on stop others from using by being the proverbial ‘dog in the manger’, its important the use the trademark that you have registered.
While the records of the Indian Trademark Office, I’m sure, have several registered marks which aren’t being used, I believe providing an affidavit of actual usage of the mark at the end of every five years or at the time of renewal (as with many jurisdictions) will solve a lot of problems in India and keep the register clean.
This article has been authored by Durga Bhatt, an IP Law practitioner.
Editorial Staff
Editorial Staff at Selvam and Selvam is a team of Lawyers, Interns and Staff with expertise in Intellectual Property Rights led by Raja Selvam.
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