A trade mark which is not used within five years of its registration becomes liable for removal either completely or in respect of those goods or services for which the mark has not been used. The object of this provision in section 47 is that a person cannot be permitted to register a trade mark when he has not used it in relation to the goods or services in respect of which it is sought to be registered or does not intend to use it in relation to those goods or services, as the registration confers valuable rights upon the registered proprietor. This is borne out of section 18 of the Act which enables a trade mark to be registered by “any person claiming to be the proprietor of the trade mark used or proposed to be used by him”. The only two exceptions which are contained in section 46 providing for application for registration to be made by a person who does not use or propose to use the mark are - a) A company which is about to be formed and registered under the Companies Act and the applicant intends to assign the trade mark to that company; or b) Proprietor intends it to be used by a person to be registered as the registered user, after the registration of the mark. An application for removal of registered mark under section 47 may be made to the Registrar or to the Appellate Board . The procedure before the Registrar in such cases is prescribed in rule 92. Application will be made on form TM-26 together with prescribed fees and accompanied by a statement in triplicate setting out fully the nature of applicant’s interest (viz. demonstrating as to how the applicant claims to be an “aggrieved person”), the facts upon which he bases his case and the relief which he seeks. Where there are registered users, such application and statements shall be accompanied by as many copies thereof as there are registered users. Under rule 92, a copy of each of the application and statement of case will be transmitted by the Registrar to the Registered Proprietor and to the registered users and any other person who appears from the register to have an interest in the trade mark. Thereafter within two months from the date of receipt by the registered proprietor of the copy of the application, the Registered proprietor will send his counterstatement on form TM-6 in triplicate setting out the grounds on which the application is contested. The Registrar will serve the copy of the counterstatement on the applicant. Thereafter, the provisions of rule 50 to 57 will apply mutatis mutandis to the further proceedings on the application. Rule 93 clearly lays down that the Registrar will not however remove the mark merely because the registered proprietor has not filed the counterstatement, unless he is satisfied that the delay in filing the counterstatement is willful and is not justified by the circumstance of the case.
Category Archives: Trademark
Bad Faith Trademark Law India
Evidence to support a claim under section 11(10) of the Act must be particularly focused as this is a very serious claim. Section 11(10) of the Act states that the registrar shall take into consideration the bad faith involved either of the applicant or the opponent. In Gromax Plasticulture Ltd v. Don & Law Nonwavens Ltd [1999] RPC 367, Lindsay J stated at page 379: “I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined. Parliament has wisely not attempted to explain in detail what is or is not bad faith in this context; how far a dealing must so fallshort in order to amount to bad faith is a mater best left to be adjudged not by some paraphrase by the court(which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to the words of the Act and upon a regard to all material surrounding circumstances”. And in Royal Enfield case the Appointed Person, held: “An allegation that a trade mark has been applied for in bad faith is a serious allegation. It is an allegation of a form of commercial fraud. A plea of fraud should not be lightly made (see Lord Denning M.R. in Associated Newspapers (1970)2 QB 450 at 456) and if made should be distinctly alleged and distinctly proved. It is not permissible to leave fraud to be inferred from the facts (see Davy v. Garrett(1878) 7 Ch.D.473 at 489). It should not be made unless it can be fully and properly pleaded and should not be upheld unless it is distinctively proved and this will rarely be possible by a process of inference” Therefore a claim under section 11(10)) must be supported by evidence of dishonest activities or dealings or at the least commercial behaviour or activities below the standard regarded as acceptable by the community at large.
Grounds of Opposition of Trademark India
Grounds of opposition: Section 21, which provides for filing Notice of Opposition, does not refer to any ground on which the opposition may be filed. The opponent is thus at liberty to set up any ground which may support his opposition against the registration of the trade mark under any of the provisions of the Trade Marks Act, 1999 and the Rules prescribed there under. However, under section 11(5), a trade mark shall not be refused registration on the grounds specified in sub-section (2) and (3), unless objection on any one or more of those
grounds is raised in opposition proceedings by the proprietor of the earlier trade mark. In this connection, it is to be noted that section 9 contains ‘absolute grounds for refusal of registration’ and section 11 contains provision for ‘relative grounds for refusal of registration’. [See also section 12, section 13, section 14 and section 18, which may form grounds of opposition]. The following is a list of possible grounds for opposition to the registration. (1) That the trade mark advertised is not registrable in that it is neither distinctive nor capable of distinguishing or that it does not satisfy the requirements of the Act as to registrability; (2) The essential part of the said trade mark is a word in ordinary use, descriptive of the character or quality of the goods and the applicant is not entitled to acquire an exclusive right therein by registration; (3) That the trade mark is not capable of being represented graphically; (4) That the trade mark is devoid of distinctive character, that is to say, not capable of distinguishing the goods, or services of one person from those of another person; (5) That the trade mark consists exclusively of marks of indication which may serve to designate the kind, quality, intended purpose, values, geographical origin or the time of production of the goods or rendering of the services or other characteristics of the goods or services (mark which is directly descriptive of the character or quality of the goods or services or indicating geographical origin); (6) That the trade mark consists exclusively of marks or indications which have become in the current language or in the bona fide and established practice of the trade (may refer to generic names or marks common to the trade); (7) That the trade mark is of such a nature as to deceive the public or cause confusion; (8) That the trade mark contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (9) That the trade mark comprises or contains scandalous or obscene matter; (10) That the use of which is prohibited under the Emblems and Names (the Prevention of Improper Use) Act, 1950; (11) That the trade mark consists exclusively of the shape of goods : (a) which results from the nature of the goods themselves, or (b) which is necessary to obtain a technical result, or (c) which gives substantial value to the goods. (The above grounds are based on the definition of trade mark and the provisions of S. 9 of the Act); (12) That the trade mark is by virtue of : (a) its identity with an earlier trade mark and similarity of goods and services covered by the trade mark, or (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark; (13) That the trade mark is : (a) identical with or similar to an earlier trade mark, and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, and the earlier trade mark is a well known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark; (14) That the use of the applicant’s mark would be an infringement of the opponent’s registration which could be restrained by the Court and the mark is therefore disentitled to protection in a Court; (15) That the applicants are not entitled to registration under s. 12 of the Act; (16) That the user claimed in the application for registration is not true; (17) That the opponents are the prior adopters and application for the registration of the same/similar mark for the same/similar goods, vide their application No. …………… dt. ………………… in class ……………. which is registered under Trade Mark No. ……………….. and/or still pending; (18) That the applicants are not the proprietors of the mark.
Trademark Opposition India
Section 21 provides that “any person” may give a Notice of Opposition to the registration of a trade mark whether he has or has not any commercial or personal interest in the matter. The person need not be a prior registered trade mark owner. He can be a customer, a purchaser or member of the public likely to use the goods. The question of bona fides of the opponent does not arise. The opponent is considered to represent not only his own interest but also to some substantial extent, that of the public. Under Section 3(42) of the General Clauses Act, 1897 the word “person” shall include any company or association or body of individuals, whether incorporated or not”. Thus, an un-registered firm or association is a person for the purpose of Section 21 of the Act (See Indian Association of Thermometry Vs. Hicks Thermometers (1981) PTC 121 at 127). However, the expression “any person” does not include a fictitious person or a ghost [(See Rajinder Vs. Devdarshan (1986) PTC 30 at page 35).] In an opposition proceedings, it is more important to consider the matter from the point of view of the public than from the point of view of two parties to the proceedings and, therefore, merits or demerits of the opponent are irrelevant [(See Eno Vs. Dunn & Company (1890) 7 RPC 311)]. The Tribunal will take cognizance of any facts that would render registration improper.
Examination of evidence of use as a Trade Mark India
The “market share” question will generally arise in the case of marks owned by large corporations. In India in a competitive business environment trade marks are used by also small traders in connection with small business. It is impracticable to require them to show “market share” held by the mark. However where claims are made for recognition of a trade mark as wellknown trade mark, it will be appropriate to require details of market share held by the applicant under the mark applied for. Turnover, commencement of use and Period of Use Evidence should be in respect of the user of the mark, when first commenced and the period of use must be before the date of filing. Any use after that date should not be taken into account. If there have been gaps in the use, it will be necessary to consider how this affects the reputation of the mark applied for. For example, a strawberry grower may not be able to demonstrate sales throughout the year, but if he sells his strawberries for two months of the year every year for ten years, that is likely to be sufficient to illustrate continuous use, given the seasonal nature of his product. Another trader might sell goods under a
certain mark for twelve years, but there may be a two year gap leading up to the date of the application in which few or no sales took place. Before a judgement can be made about accepting or refusing the mark, it would be necessary to look at all the surrounding facts to see what effect that gap had. If sales weren’t particularly strong beforehand, the reputation of the mark may have been severely diminished. If, on the other hand, sales were very good both before and after, it may be that the gap would have no negative effects on the reputation at all. Sales turnover figures should normally be given for the sales of goods/services under the mark over a period of about five years before the date of application. If the period of use is shorter, the turn over for the period in question should be considerable, having regard to the nature of goods. The greater the turnover, the more likely it is for the mark to be accepted. Turnover, advertising and period of use are considered together – massive turnover and/or advertising could compensate for a short period of use. Ideally, the turnover figures should be broken down to give the turnover relating to each class of goods/services. However, industry does not group its products according to the WIPO system of classification, so this may not be a practical proposition. There should however be sufficient breakdown of the goods/services to support a finding that the relevant public has been repeatedly exposed to the mark in use as a trade mark for all the goods/services for which acceptance is proposed. In the case of financial services, turnover figures may not always be the appropriate means to gauge the extent of use of the trade mark. For example, turnover figures which are merely the total amount loaned or insured by the applicant will give an inflated picture in relation to how well-known the mark is in terms of exposure to the relevant public. However, a clear indication of the extent of use is required if the applicant is relying on this to demonstrate that the mark has acquired a distinctive character. In the case of financial services the number of account holders or investors and, if appropriate, the number and geographical spread of branches, could be used to demonstrate the extent of the use. Area of use Registration of trade mark is made generally on All India basis, unless otherwise the registration is limited to particular territory such as “for use in the state of ……” or “for use in the district of ………”. Such territorial restriction may be applied generally in the case of perishable goods such as milk products or vegetable products and not in the case of other consumer durables/FMCG. For
export: Occasionally, turnover figures also include goods for export. These figures may also be taken into account when considering the strength of the evidence. If turnover relates to goods manufactured in this country which are only for export, the applicant stands in the same position as a proprietor with a purely local reputation. The evidence will not normally be sufficient to demonstrate that the mark has acquired a distinctive character amongst a significant proportion of the relevant public in India. In such cases, application may be accepted as “only for export”. If the use of the mark is only outside India, such use is irrelevant in this country. Expenditure on advertisement of trade mark Expenditure on advertisement of trade mark are normally provided for a period of 3 years or more prior to the date of filing of the application. The nature of the advertising should be given where possible e.g. television, radio, newspapers, trade magazines, etc. The Registry should see whether the advertising was nationwide or restricted to local areas. The figures should be broken down to show costs in relation to each class of goods/services where this is feasible. The importance to be attached to advertising figures will very much depend on the goods/services at issue. For example, the advertisement expenditure between highly sophisticated goods or fast moving consumer goods would be totally different. There may be little or no advertisement expenditure for highly specialized products with a special market. e.g. aircraft market As against that the expenditure in relation to the promotion of toothpaste or cosmetics may be very high. In the case of some products of small value the company’s promotion of their products may be through catalogue informing the existing clients of their updated products,. It is therefore important to assess the
circusmtances of each case in assessing the quantum of expenditure on advertisement on trade marks. Exhibits – are required to show how the mark has been used and in relation to which goods/services. They may be, for example, brochures, catalogues, price lists, invoices, area of sales, advertisements, etc. All exhibits should be dated prior to the date of application.
