Legislation in all countries generally makes provision for removal of trademarks from the register to either correct wrongs or to take note of changed market situations. This process is referred as rectification of the register. The international agreements or treaties sometimes require mechanism in national legislation for cancelling registration in relation to certain specified reasons. It is necessary to have such provisions so that the adverse effects of a trademark registration, if any, on the trademark rights of other persons including nationals of other member countries may be redressed by cancelling the registration of a trademark, or removing it from the register. The importance of the rectification provision got diluted in India, because the courts opted to issue injunctions against the registered trademarks in passing off actions.
The grounds of removal can conversely be appreciated as necessary conditions for continuance of the trademark in addition to initial registration requirements. Compliance with these grounds is necessary for maintaining the trademarks on the register. An initially irregular trademark registration can meet two fates – the trademark may be removed or there are certain provisions of law which may cure the defects in the initial registration. Section 31(2) and section 32 are important in this regard.
Shift of jurisdiction to IPAB:
The journey of trademark law saw shift of jurisdiction in relation to law of rectification. The jurisdiction got shifted from high court having jurisdiction to the Intellectual Property Appellate Board(IPAB) or board and its benches. The rectification may be filed before registrar or the relevant bench of IPAB. The expression IPAB and court may sometimes be used interchangeably because courts were predecessors and the law laid down by them holds ground.
Different expression for rectification:
Different expressions have been used the result of which mostly is the same e.g., rectification, removal, expunged, cancelling, taken off etc. Section 57(1) speaks of cancelling or varying the registration of trademark; the term “rectification” is used in the context of rectification of an error or defect in any entry in the register for which an order for expunging or varying the entry may be made. “Removed” is a term used in section 47 in relation to trademarks about which an order of expunction is made. Section 32 enacts provisions seeking to save a trademark from the possibility of being declared invalid. These expressions including removal of trademark may be appreciated in the same light, except where the context does not permit. e.g., dichotomy is drawn in relation to stay of proceedings.
Circumstances when rectification desired:
The rectification of register may be possible under section 57 in following circumstances:
- On the application of an aggrieved person.
- The tribunal of its own motion, after giving notice and hearing to the parties concerned can also rectify the register.
- The register may also be rectified when any proceeding is pending before the court and a question arises about expediency of rectification of the register.
Rectification for protection of public:
In considering section 57(2) and section 9(2) the primary duty of the court or appellate board is towards the public and the maintenance of the purity of the register. When a case is sought to be made out, that a particular trademark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation, as it is between the party defending his right to a particular trademark and the public. The duty of the board/court in the circumstances is always to protect the public. The duty of the board/court in the circumstances is always to protect the public, irrespective of any hardship or inconvenience it may cause to the particular party whose trademark is likely to deceive or cause confusion. The court and the registrar are duty bound to protect the public as well as resolve conflicting rights of trademark owners and to maintain the purity of the register.
Purity of register:
In considering an application for rectification under section 57(2), the court has to consider not merely the conduct of the parties, but also the question of purity of the register in public interest, whatever be the ground on which rectification was sought, especially where the marks are identical. Where the original registration is neither illegal nor improper, an application for rectification must show sufficient or proper reason for applying for expunction of the trademark from the register of trademarks. Mere fact that the concerned parties are at loggerheads in trade is not as sufficient ground for giving locus standi to maintain the application.
Maintenance of the purity of register has been emphasised by the English and Indian courts times and again, The purity of 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 the attention of the court is called to an entry on the register of a trademark which cannot in law be justified as a trademark, it seems that the court’s duty is, whatever the demerits of the applicant, to purify the register and to expunge the illegal entry in the interests of the trade. IPAB has shown a new trend recently when it rectified VEGABOND which was registered in favour of a party from Italy whereas the actual owner was using it in 41 countries and also had international registration.
Correction of register:
The registrar is authorised to correct the trademark register by virtue of section 58 for the following purposes which reads:
- Correcting any error in the name, address or description of the registered proprietor of a trademark, or any other entry relating to the trademark;
- Enter any change in the name, address or description of the person who is registered as proprietor of a trademark;
- Cancel the entry of a trademark on the register;
- Strike out any goods or classes of goods or services from those in respect of which a trademark is registered.
The registrar is further authorised to make any consequential amendments or alteration in the certificate of registration.
Counter blast rectification:
The rectification petitions which are filed as counter blast, i.e., in retaliation by the respondents in the infringement and passing off proceedings initiated by the registered owners of such trademarks are not looked favourably. The appellate board has taken the view that instead of subsequent rectification proceedings such parties should have opposed the initial grant of trademark.
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