Introduction
In India, the seed for the Trade Mark law was sown in the year 1938 when India borrowed from the British Trade Mark Act, of 1938 and developed its first Trade Mark act in 1940. In the Post-Independence period the act was molded into a new act – The Trade & Merchandise Mark Act, 1958. Today the trademark law in India is governed by the Trade Mark Act, 1999.
Subject to the provisions enlisted under Section 25 of the Trade Marks Act, 1999, a trademark is granted registration for a period of 10 years from the date of registration. Registration of a trademark in India is valid for a period of 10 years and can be renewed further for a period of 10 years from time to time subject to payment of renewal fees and application in a prescribed manner. However, it is to be noted that the registration of trademarks does not guarantee their validity forever.
There always exists a possibility that a mark may have been registered wrongly or may have continued to remain wrongly on the register due to certain events subsequent to registration or the mark has not been used for a certain period of time.
In such cases the Trade Mark Act, 1999 provided for two procedures namely, Cancellation of trademarks and Rectification of trademarks. An application for Cancellation can be filed before the Registrar of Trademarks or Intellectual Property Appellate Board (IPAB).
Who may file for the cancellation petition?
According to Section 57 of the Trade Marks Act of 1999- any aggrieved party may submit a cancellation request to the Intellectual Property Appellate Board for the purpose of revoking or changing a trademark’s registration.
Cancellation by registered proprietor
The owner of the trademark may, in some circumstances, take the initiative to voluntarily terminate the trademark’s registration in India. The voluntary cancellation of a trademark registration is typically brought on by an agreement the trademark owner has made with a third party or by other business actions.
Grounds for filing a cancellation petition
Contravention to abide by a condition
Only when there is non-compliance with or violations of any conditions outlined by the Registry is there a “contravention on failure to observe a condition” attracted. However, it is important to remember that the clause does not apply to limitations as described in section 2(1).
For instance, if the mark is subject to stated conditions regarding the colour scheme, failure to comply with those criteria would constitute a violation and would be grounds for the revocation or modification of the trade mark registration under Section 57(1).
Omission from the register of any entry
When a trade mark that should have been registered with a condition or conditions has been registered without any, this basis can be used to challenge the registration.
An entry made in the register without sufficient cause
If any provisions of the Trade Marks Act of 1999 or the Trade Mark Rules of 2017 are determined to be violated by a registered mark, the registered mark may be challenged in such situations without good reason.
Error or defect in any entry in the register
If it can be proven that a registered trademark or its entry in the register has been kept there in error, the registration of that trademark may be contested.
Example:
A trademark that violates one or more of the following should not have been registered.
1. Absolute reasons for rejection (Section 9)
2. Relative reasons for rejection (Section 11)
3. Prohibiting the use of international non-proprietary names or names of chemical elements in registration (Section 13)
4. The use of names and likenesses of live or recently deceased people (Section 14)
5. Requirements for submitting an application for registration under (Section 18)
Non-use
There was no genuine use of the Trade Marks in relation to the products and services for the time being up to a period of three months prior to the date of the application, and the Trade Mark was registered without any bona fide intention on the part of the proprietor (or any proprietor). (Article 47)
If a trademark is not used within five years of its registration, it may be totally removed or only applied to the goods or services for which it has not been utilized. (Article 47)
Case law
In M/S. J.N. Nichols (Vimto) Limited vs. Rose & Thistle and Another, the Calcutta High Court addressed the issue of trademark non-use.
In the decision, it was said, “Incidentally, it is important to keep in mind that using a mark does not imply that products bearing that mark have really been sold. It is now well established that even simple advertising without even the presence of the goods can be deemed to be a use of the mark. “Use” to me can be in any form or way and does not necessarily entail and indicate an actual physical sale.
Therefore, it can be claimed that adoption must be genuine and compliant with market/commercial norms in order to constitute “USE” in connection to trademarks. Malafide use of the mark is when the aim behind the registration of a mark is not to really use the mark but rather to obtain registration.
Dr. Reddy Laboratories Ltd. v. Red Bull AG
The current application has been submitted to the Intellectual Property Appellate Board in order to have trade mark no. 1058481 removed from class 09 registered in the name of DR. Reddy’s Laboratories.
Red Bull argued that the registered slogan “Your wings to life” used by the registered proprietor, Dr. Reddy Laboratories Ltd, was confusingly similar to the applicant’s mark “Gives you wings” and claimed it to be a novel idea. Additionally, it was claimed that Dr. Reddy Laboratories had waited 19 years before starting to utilise the disputed mark (since registration in November 2001)
“The competing trademarks are neither deceptively similar nor identical with,” the IPAB concluded in the current case. Your Wings to life are not the primary mark for the application.
It is the auxiliary brand. The applicant does not claim that the goodwill and reputation relate to the principal mark of Red Bull.
Only in cases where it can be demonstrated that the person requesting an application for rectification or cancellation is an aggrieved party will the issue about the non-use of the mark come up.
According to the ruling in the present case, the marks “Your wings to life” and “Gives you wings” are not comparable.
In Marico Limited v. Agro Tech Foods Limited, a division bench of the Delhi High Court responded to the issue of trademark validity by stating that
“Section 31(1) registration is simply prima facie evidence of validity and not conclusive evidence.”
If the rectification/cancellation actions initiated for the cancellation of the registered trademark do not ultimately succeed, registration would merely be a conclusive indication of validity.
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Disclaimer: The information presented here is only meant to be informative. Although this article was carefully crafted, it should only be regarded as general advice because it has been expressed in general terms. You should not act on the information provided in this article or refrain from acting upon it without first seeking professional advice since it cannot be relied upon to address your unique situation
Author Bio
I observed a case where Notice of Opposition is filed ~2 years after Registration of a trademark and the registered trademark status changed to “opposed”.
I was under an impression that Opposition notice can be filed within 4 months of Advertising in Journal.
Check out trademark e register application number :4345072
Notice of opposition is sent after 2 yrs of registration