Application for Removal of Trademark Registration in Cochin
Application for removal of Trademark
The trademark brings you a unique identity among your rivals and it has some unique reputation of your brand. The trademark registration process is quite long process, it takes minimum of six months to register your brand name if it is a unique name. If you choose your brand name as phonetically or visually similar one of already existing one, it takes one or two years to register your trademark. If you want to terminate your business, you also have the right to remove your trademark. This process also has some procedure. You have to file an application for remove your trademark. The following real time examples can help you to understand the removal of trademark in this article.
Application for the removal of the trademarks “ULTRAFILTER”
Now we will come to the issue as to whether the respondent has obtained the impugned registrations honestly and bonafidely. We have already come to the conclusion that the respondent has no claim to proprietorship right over the trademark. The respondent was permitted to use the trademark and the word Ultrafilter as part of its corporate name by the predecessor. The averment of the respondent that it has been using the mark continuously since its incorporation and is the only lawful user in India is not tenable as the respondent was a permitted user of the trademark and the word ULTRAFILTER and whatever reputation and goodwill it might have acquired vests in and ensures to the applicant. The averment of the applicant, at para 7 of the statement of case that the respondent had earlier also applied for registration of ULTRAFILTER trademark but upon pointing out to them the
Trade Marks User Agreement, it withdrew all the applications, was not contradicted in the counter-statement. The respondent has in the counter-statement stated “Our company’s name is Ultrafilter (India) Pvt. Ltd. For which we have a registered trademark stating ULTRAFILTER INDIA and our logo is ULTRAFILTER INTERNATIONAL and due to exports, for which we have a copyright for the mark. Hence statement made in the paragraph by applicant does not contain any point of law”. Though the respondent claims that it is manufacturing products with its own technology and also exporting the products, no sale figure, voucher or advertisement is produced.
If the registration is found to have been made in contravention of any provision of the Act, the entry could be challenged as one made without sufficient cause. The respondent has obtained registration in its name when it was using the trademark in a capacity of the licensee, that too contrary to its to the acknowledgement not to obtain trademark registration. Obviously, the respondent was not a proprietor of the mark on the date of filing applications for registration, is a generic word which is not registrable unless acquires a secondary meaning or a distinctive character with constant user for a considerable period of time, impugned marks and goods covered by them being deceptively similar to the earlier trademark ULTRAFILTER and goods covered by that mark and there exist likelihood of confusion and deception causing in the mind of consumers and it could not be registered to the extent the earlier mark is a well-known mark and the use of the impugned registration causes passing off the goods of the respondent as the goods of the applicant. The above mentioned disqualifications exist even at the time of filing the present applications. The respondent has not even attempted to disprove the above mentioned disqualifications and has not shown that it has discharged the onus of proving that it is the proprietor of the mark, the mark is distinctive and due to long use acquired distinctive character and the trademark registration and use of mark will not be contrary to the provisions of section 11 of the Act. There is not an iota of invoice or bill or advertisement on record to show user of the mark by the respondent till registration or even thereafter, till the date of filing of the present applications.
Coming to the contention that the applicant has not proved that I t is the successor of the predecessor; it appears that the respondent is trying to wriggle out of the present proceedings by raising too technical objections. The respondent has not refuted the reply of the applicant extracted during the course of argument, and the respondent has in the counter statement under the heading “A statement of case in support of our defence’ has stated that the company Donaldson Filtration Deutschland was formed by M/s. Donaldson of USA during 2004 and during 2004 Donaldson filtration Deutschland has applied registration in India through Delhi Trademarks Registry claiming usage since 2004.This shows that the above named company exists. Apart from this, whether Donaldson Filtration Deutschland is the successor or not, the respondent who has obtained registration malafidely on misstatement and misrepresentation during the currency of agreement cannot be allowed to remain on the register which will be against the object and spirit of the Act.
Rectification of application for the removal of trademark – jurisdiction
It is abundantly clear from the above extracted sections of the act that the person aggrieved can make an application for removal from register and imposition of limitations on ground of non-use or rectification of register under section 47 or section 57 of the Act. The option is of the applicant to choose the appropriate forum before which he decides to file such application. The only rider to the above extracted provision is that no suit for infringement, in which the validity of registration is questioned, should have been instituted or pending before a civil court and where this condition exists, the application is required to be filed before the Appellate Board only. In the present case it is averred that suit for infringement, raising an issue of validity of the registered trademark, is not instituted, the applicant had option to file the application either before the Registrar of Trademarks or before the Appellate Board and the applicant had accordingly chose to file such application before the Appellate Board. We do not see any jurisdictional issue involved in the application filed before this Appellate Board. As per section 83 of the Act, this Appellate Board has been established to exercise the Jurisdiction, powers and authority under the Act. Section 83 of the Act is, for the sake of convenience, extracted as under:
Establishment of Appellate Board
The Central Government shall, by notification in the Official Gazette, establish an Appellate Board to be known as the Intellectual property Appellate Board to be known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it by or under this Act. Section 47 and 57 of the Act confer jurisdiction on the Appellate Board to entertain application thereunder and make such order as the Appellate Board may think fit. The applicant has in the application for rectification averred that it is the person aggrieved for the reasons given therein. The applicant has also filed the application for rectification under sections 47 and 57 of the Act and only mentioned section 125 of the Act in the heading of the application. A mere wrongly referred section of the act cannot be a ground to throw away the application.
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