ENTRY WRONGLY REMAINING ON THE REGISTER – RECTIFICATION OF TRADEMARK
ENTRY WRONGLY REMAINING ON THE REGISTER-SUB-SECTION (2)
The words “wrongly remaining on the register” were introduced for the first time in the corresponding section 35 of the UK Act of 1905. As was pointed out by Parker J in the Gramophone case, “none of earlier Trademark Acts provided machinery for taking a mark off the Register, if once it had been properly put on”. The Legislature has provided for the future by the words “by any entry wrongly remaining on the Register” in section 57, which are to be contrasted with the preceding words, “by any entry made in the Register without sufficient cause”.
The material date for consideration in the context of an allegation that the “entry is wrongly remaining on the register” is not the date of trademark registration in Coimbatore, but the date on which the application for rectification is made. The attack is not whether or not the original entry was rightly made, but against the entry wrongly remaining on the register by subsequent events, including by the conduct of the registered proprietor. Thus the relevant date is the date of application for rectification. If registered trademark is used for deceptive purposes or in a deceptive manner, it ought to be removed.
The following classes of cases arise for consideration under the heading “entry wrongly remaining on the Register”:-
(1) Where the entry had been made in the Register without sufficient cause and is still remaining on the Register;
(2) Where there had been no bona fide use of the mark for a continuous period of five years and one month;
(3) Where the mark was validly registered, but by reason of some circumstances arising since the date of registration the mark has ceased to be distinctive of the goods of the registered proprietor;
(4) Where the registered mark has been abandoned;
(5) Where the fee for the renewal of trademark registration has not been paid within the prescribed period;
(6) Where the mark offends against the provisions of section 11 and is likely to deceive; and
(7) Improper or invalid assignments and transmissions;
(8) Wrongful assignment or transmission:
(9) Fraudulent registration.
These are briefly considered below:
1) Entries wrongly made and remaining on Register
Cases falling under this class have already been discussed “Entry made without sufficient cause”. If you enter the wrong details, it will goes under this category.
2) Removal on ground of non-use
A trademark may be removed from the Register in respect of any of the goods for which it is registered on the ground that there was no bona fide use of the mark by the proprietor for a continuous period of at least five years ending one month before the date of the application for trademark registration. but this provision does not apply to defensive registration. In several cases registration has been limited by striking out goods for which the proprietor has not used the mark.
The registered trademark “KODAK” was in respect of photographic goods and articles of clothing. The applicant for registration of the mark “KODIAK” for footwear sought removal of the mark “KODAK” in respect of articles of clothing. Evidence was shown that “KODAK” was used on T-shirts. The registered proprietor appealed against the Registrar’s decision to expunge the mark, the court at first instance dismissed the application for registration of “KODIAK” holding that they were not aggrieved persons. Allowing the latter’s application, the court of Appeal held that a mark used on goods to advertise other goods cannot be used as a trademark in relation to either or both goods. In this case the mark advertised photographic film and not the T-shirts as a product themselves; and that there can be no trade in goods which are merely ancillary to a wider trade. T-shirts were not an essential article for the purposes of photographic trade; there was no trade in T-shirts per se. The use of KODAK on the T-shirts was not bona fide use of the trademark registration.
3) Loss of distinctiveness -Publici Juris
The validity of registration of a trademark registered in Part A of the Register can be attacked, if at the commencement of the rectification proceedings the mark has lost its distinctiveness, even though seven years have elapsed after the date of its registration.
Section 32 of the old Act which contained such provisions has now been omitted in the present Act. If, therefore, a mark although originally distinctive, has ceased to be so by reason of events subsequent to registration, the mark is liable to be struck off the Register. Distinctiveness may be lost where there have been several infringements and the proprietor neglects to take prompt action to restrain them. But infringements by the same person, though repeated, will not ordinarily be enough to deprive the mark of its distinctiveness.
Where, for any reason including inaction on the part of the registered proprietor, the use of a mark has become common in the trade subsequent to its trademark registration in cochin, it is liable for rectification. Unchecked infringements will render the mark the risk of losing its distinctiveness. In Sinclair Orr’s TM, it was held that “the trademark, the Infringement of which no person is in a position to prevent, is very much like an abandoned ship; it is a danger to the community so long as it is allowed to remain afloat.
4) Abandonment – publici juris
Where it is obvious that the proprietor had abandoned his trademark, the Register may be rectified by removal of the mark even though there has not been non-use for five years as specified in section 47. As was remarked by Tomlin J with reference to section 37 of the UK Act of 1905 relating to non-use of trademark the section provides only something which may be regarded as conclusive evidence of abandonment but there are other ways of proving abandonment. In Pink versus Sharwood & Co Ld., where the business in which the mark was used had been discontinued for three years and the stock and chattels had been sold, it was held that the goodwill had determined when the business was discontinued and that the mark must be treated as abandoned. The application to expunge the mark from the Register was allowed.
A trademark which has been abandoned “is a danger to the community so long as it is allowed to remain afloat, and any trader, who may desire in the course of his trade to adopt a mark which in the circumstances he is honestly entitled to adopt, but which might be an infringement of the registered mark, when there is not anybody entitled to sue in respect of the registered mark is…an aggrieved person, and as such has a right to come to the court and ask to have the derelict and abandoned mark removed”. In Pink versus Sharwood & Co Ltd, where the business in which the mark was used had been discontinued for three years and the stock and chattels had been sold, it was held that the goodwill had determined when the business was discontinued and that the mark must be treated as abandoned. Application to expunge the mark was allowed, even though the non-use was not for prescribed period of five years. Where the proprietor ceases to have any intention to deal in the goods for which the mark is registered, that would be evidence of abandoned so far as those goods were concerned.
5) Non-payment of renewal fee
The Registrar may remove a trademark registration from the Register for non-payment of renewal fee. See section 25.
Registration of a mark is for a period of ten years, effective from the date of making of the application and therefore, the law provides for its renewal, on application made by the registered proprietor and on payment of the prescribed renewal fee.
Where a mark which has become due for renewal and the registered proprietor has not complied with the provisions concerning renewal, it becomes liable for removal as an entry wrongly remaining on the register. The fact that the Trademarks Registry has not physically removed the mark from the register will be of no assistance to the registered proprietor, once the registration has expired and has ceased to be in force. It is to be noted that the definition of the expression “registered trademark” has been modified in the 1999 Act, to mean “a trademark which is actually on the register and remaining in force.”
6) Marks which are likely to deceive
A mark which is deceptive will be ordered to be removed from the Register. Mis-statements not contained in a mark and not made by the proprietor, but made extraneously with regard to it after the goods have passed into the hands of other owners would not justify rectification. Where a trademark is not deceptive in itself but has been used as part of a label which has been held likely to deceive, the mark will not necessarily be removed from the Register.
When rectification is sought in respect of a mark which consists of or contains an essential particular under section 9(1), and therefore, per se is registrable, the circumstances under which the mark was used prior to trademark registration must be considered
7) Likelihood of confusion
“Where the question of the likelihood of deception or confusion arises upon an application to expunge a registered mark which has already been the subject of substantial use, the absence of evidence of actual confusion having occurred is a patent factor in determining whether or not the court should exercise its discretion to expunge the mark from the register. But it does not decide the relevant hypothetical question which must be answered in the affirmative before any question of discretion to expunge the mark arises: Would any normal and fair future use of the mark, in the course of trade be likely to cause deception or confusion? If actual confusion in the past is proved, this is a strong indication that continued confusion is likely; but the absence of evidence of past confusion may be accounted for by the small extent to which the mark has been used or by special circumstances affecting its past use which may not continue to operate to prevent confusion in the future.
8) Wrongful assignment or transmission
Rectification of the Register may be ordered in case of improper assignment or transmission or licensing of the mark. Before the UK Act of 1938, the law relating to assignment of trademarks under UK statutes wad based on the common law, and an assignment made without the goodwill of the business was not valid under those statutes, It was held that where such assignment had been registered the entries in respect thereof ought to be expunged, and that divisibility of goodwill of manufacturing and vending business in which the mark was used was not permissible.
Under the UK Act of 1938, however, an assignment or transmission of a trademark without transfer of the goodwill of the business is expressly permitted.
The statute law relating to assignments and transmissions of trademarks in India is the same as the present UK Statute law under the Act of 1938. An entry as to an assignment or transmission which is contrary to the provisions of Chapter V of the Act is an entry wrongly remaining on the Register and may be removed.
9) Fraudulent registration
A trademark could be expunged from the register if trademark registration is obtained by fraud. Registration obtained by making a false claim to be the proprietor of the mark is a registration obtained by fraud. Registration was ordered to be expunged on an application for rectification.