Rectification of trademark

Rectification depends on the changes in the Trademark Registry. The Trademarks Registry is a registry which is carried by the Controller general of Trademarks and Copyrights. The trademark registry is having the relevant information about the registered trademarks like name and address of the proprietor and description of classes of goods and services and the owner of the trademark. From the nature of this information it never remains same or constant. It may vary time to time. The Trademarks registry have to update the details if any changes in the description of goods and services, changes in name and address, changes in proprietorship of each and every trademarks which is registered in it. To keep this kind of changes up to date will have to bring on record.  The rectification proceedings dealt with Sections 57 to 60 of the Trademarks Act, 1999. The other proceedings like the removal of marks and alteration of trademarks in the entries of Trademarks registry is kept in Section 47 of the Trademarks Act, 1999. The application for rectification is filed before the Registrar or to the Appellate Board.  The rectification or amendment is made by the Registrar or Appellate board after verifying that the rectification or amendments are permissible on the principles of natural justice. If it is not under the natural justice, the application for rectification is refused by the Registrar. In this article, we have to discuss about the rectification of trademark with the real time example of trademark “Thayar” which is registered in Trademark class 30.

Rectification application for expunction mark “Thayar” registered in class 30

As mentioned in earlier paragraph, the rectification application may be filed under the provisions of section 47 and 57 of the Trademarks Act, 1999. The object of rectification is to rectify or purify the Register of Trademarks which is a public purpose. The purity of the Register of Trademarks is much more important to maintain a public interest to register the trademark. The applicant’s locus standi is determined on the principles as that in the public interest litigation. Here in the instant case the rival marks are identical or similar and the use of the same would cause confusion in the minds of the public. That apart the applicants had been using the same since 1997 continuously and the respondent has issued a legal notice in November 2006 by which the applicant is termed to be a person aggrieved. The grievance must always be legal, by which the aggrieved is likely to be legally injured. The applicant is a person aggrieved by the presence of the impugned trademark on the register and has a locus standi to file this application for rectification, as the marks are identical.

The other issues are that the registration of impugned trademark is in contravention of the provisions of the Act. Unless it is shown that the mark has acquired a distinctive character as a result of use before the date of application or is a well-known trademark, such registration will be in contravention of the provisions of section 9 of the Act. The applicants claim user since December 1995 which has not been satisfied. The main contention of the respondent was that one Mr. M.K. Ramanathan had adopted the trademark “THAYAR” in the year 1927 and the business was leased out to the respondent by a large agreement dated 31.03.1981. He also further stated that the said Mr. Ramanathan had applied for registration of trademark in the year 1987 in his own name. If that be so, then only the business was leased out and even further looking into the lease agreement will only show that there is no mention about the trademark. Mr. Ramanathan passed away in the year 1997 and the sons of Mr. Ramanathan had acquired the title of the said business by a will dated 07.02.1996 which was subsequently transferred to the respondent herein on 01.02.1999. Even here, there is no mention of the trademark. Considering the above facts, it is clear that, if at all the respondents use is to be taken it can be only from the year 1999 and it is not clear as to how the respondent has claimed user since December 1995. The registration has, therefore, been in contravention of the provisions of section 18 of the Act.

The next objection was that the registration was in contravention of the provisions of section 11 of the Act. When the registration is hit by the provisions of Section 11 of the Act, the trademark is to be cancelled. The risk of likelihood of confusion is present when the mark and the goods are identical. Here in the instant case, there is no doubt that the marks are identical. The goods are also similar for which the registration has been granted while assessing the likelihood of confusion, the type of persons-consumers has to be considered. The goods here are wet idly flour which is being purchased by both illiterate and literate people. The possibility of confusion is not only likely but also certain. In fact, though the respondent has obtained registration for the trademark “THAYAR” has not used it for the goods registered and if at all is using it, he is using it for other goods and the word “THAYAR” is being used as the name of their provisional stores. On perusal of the bills it is clear that the respondents are not dealing with the goods falling under class 30. It is, therefore, seen that the respondent is using the marks as a trading style alone and not as a trademark and is not vending its products bearing the said impugned trademark.

Coming to the issue of the respondent obtaining trademark registration claiming benefit under section 12 of the Act, we will have to consider the factors for registration. As per the dictum of Lord Tomlin the following factors are to be considered for allowing registration under section 12 of the Trademarks Act, 1999:

• The extent of concurrent use;
• The quality and the area of trade;
• The degree of confusion likely to ensue from the resemblance of the marks, which is to a large extent, indicative of the measure of public inconvenience;
• Honesty of concurrent use;
• Whether any instances of confusion has been proved;
• Relative inconvenience which would be cause if the marks in suit was registered, subject, if necessary, to any conditions and limitations.

The onus of establishing a case for registration under section 12 of the Act lies on the applicant, by proving, their honest adoption. In the instant case, we do not find any reason given by the respondent for adoption, whereas, it is evident from the records that the respondent has not adopted the trademark on his own, but states that he acquired from a third person. In fact, there is no whisper of the transfer of the trademark in way of documents say lease agreement, will or the transfer deed. The use of the mark will not be sufficient but the adoption must be honest. In case of the benefit under section 12 of the Act, the likelihood of confusion need not be proved in case of honest concurrent use. The same has not been satisfied. The objection under section 12 of the Act is also answered in favor of the applicants.  Next will be the issue to maintain the purity of the Register. The purity of the Register of trademarks has been considered to be an important aspect.

It is a noteworthy statement is written below to your complete clearance: “The purity of the register of trademarks is of much importance to trade in general; quite apart from the merits or demerits of particular litigants. If on a motion like the present, the attention of the court is called is called to an entry or the register of trademarks which cannot in law be justified as a trademark, it seems to me that the court’s duty may well be whatever be the demerits of the applicant – to purify the register and to expunge the illegal entry in the interests of trade, as was done in Stone Ales case.”

An illegal entry may be expunged whatever be the merits or demerits of the applicant for rectification. Here the registration is improper in our view and has got to be removed. Now, finally we shall deal with the issue of fraudulent trademark registration. A trademark could be expunged from the register if trademark registration is obtained by the fraud. Registration obtained by making a false claim to be the proprietor of the mark is a registration obtained by fraud. The applicant has pleaded fraud in this application for rectification. We find that the trademark registration has been obtained by claiming wrong proprietorship. In fact, the user claimed is not proved by the respondent. The date of user in the application for rectification is not substantially proved. As already observed in the earlier paragraph, the respondent even though seems to claim the right from the erstwhile proprietors has not proved the same for the date claimed in the application for registration. The trademark registration is to be expunged for this reason too. We, therefore are of the view conclude that the respondent has used the mark only as a trading style for their provisional stores and not as a trademark. The respondent though has obtained trademark registration for the goods falling under class 30 has not sold any of the goods.