Inexcusable fiasco by the IPAB – What exactly is the point of Order no. 156/2013?
I was referred to this article by one of my colleagues who got it on his RSS Feed. The article itself points to a recent order of the IPAB which “yet again chastised the Indian Trademark Registry in its Order dated 12th July”. Naturally my curiosity was piqued and I went on to read said Order.
Much to my shock and dismay, it appears that the IPAB has come out with yet another unfortunate order without factual or legal research. Sample this. The IPAB quotes two trademark applications, TM no. 1340549 in Class 29 and TM no. 1346594 in Class 29, which are in no way related to the case they were dealing with under the Order. Worse yet, the final line of the Order pompously states “In the result ORA/32/2006/TM/DEL is allowed and registered trade mark 1346594 in Class 29 is removed from the register”. The funny thing is that neither of these two applications is in Class 29.
The IPAB’s Order records from one of the parties’ contentions that TM no. 1340549 is registered for the mark Pachranga International in Class 29 and its proprietor is M/s Pachranga International Pvt. Ltd. In reality, the online records of the TM Registry show that the TM no. 1340549 is for the mark “MASTECH” in Class 9 applied in the name of Precision Mastech Enterprises Co. The mark is presently opposed. About TM no. 1346594 that got removed by the IPAB’s present order, it is a registered multi-class TM application filed in Classes 9, 24 and 25 by Mascot International A/S for the mark “MASCOT (DEVICE OF BEAR)”.
Also to be noted is the fact that according to the IPAB’s recital in its Order, the mark sought to be removed is TM no. 1340549 and the one that was eventually ordered to be removed is TM No. 1346594. Now is that scary or what? I find it unnerving. Call me paranoid but I fear I might get an email from a client asking me about the status of his mark, following which I go online to find that it has been removed pursuant to some IPAB order which the client was not a party to. Being well aware of the speed at which the Registry is working presently, I won’t be surprised if it takes a couple years (at least) before I get the “inadvertently” removed mark back on the TM Register.
The questions buzzing through my head at this point are something like this: Should all of us lawyers handling the trademark portfolios of our clients now start clamouring for IPAB orders to see if our clients’ marks have been “inadvertently” removed? What is the legal status of the mark that was so removed? Should we write to the Registrar of Trade Marks seeking corrigendum? Does the TM Registry usually go through the entire order of the IPAB before it proceeds to remove a mark from the TM Register? Does the TM Registry verify if the TM application nos. mentioned in the IPAB orders are correct?
That is not all that is lacking with factual research in the Order. The case at hand is between two brothers and deals with a trademark “PIP” which was initially applied for in 1991 and registered as TM No. 554681(yes, this has been correctly mentioned) in Class 29 by a partnership firm consisting of their father (now deceased) and themselves. The original partnership deed drawn in 1983 was amended in 1999 to reflect this registered trade mark and state that upon dissolution of the partnership, the two brothers would be entitled to the independent use of the registered trademark subject to the difference in their trading names. The amendment also provided that a partner may be expelled by notice in writing to him and the remaining partners had the liberty to form a fresh partnership to carry on the same business.
The respondent to the case contended that the applicant was expelled from the partnership vide a letter dated 15th February, 2001 “on account of unethical and anti-partnership activities which caused irreparable loss and injury to the firm”. The applicant denies being expelled. It is also to be noted that the Order recites that the original partnership was dissolved in early 2002. The Order also states “On 26th March, 2002 the partnership firm M/s Pachranga International assigned the trade mark, trade name and label in favour of Smt. Sharada Dhingra one of the Directors of the respondent company.” The respondent’s company is mentioned to be set up in July 2001.
The Order blindly recites the contentions of the parties (not necessarily in the order that it has been recited here) and does not see it fit to verify them. Is it not logical to seek for the letter dated 15th February, 2001 which purportedly expelled the applicant? Apparently the IPAB does not think so. Further the Order doesn’t dwell on the logical progression of the facts. If the applicant was indeed expelled, the original partnership would have been dissolved to create a fresh partnership in accordance with the amendment made in 1999 to the partnership deed. This would then mean that the applicant was at a liberty to use the mark “PIP” also in accordance with the amended agreement. However even in a case where the applicant was not expelled and the partnership was dissolved in early 2002 then by virtue of this dissolution, the applicant was entitled to use the mark “PIP” in accordance with the amended agreement. Why did the IPAB not seek to find out how the respondent could serve legal notice upon the applicant for something the applicant did in accordance with their agreement? Am I missing something here?
I found the whole case fishy. It reeked of typical family fueds so I naturally wanted to find out if there were other “PIP” marks that have been applied for, preferably in the name of either of the brothers. I used the public search feature on the TM registry’s website only to find that there are indeed two applications, one made by each brother. One in the applicant’s name for the mark “PIP” (TM no. 1091426) and the other in the respondent’s wife’s name for the mark “PACHRANGA PIP” (TM no. 1022539), each of which has been opposed by the other and still at the opposition stage.
There is no mention of the applicant’s application throughout the Order. There is however a mention of the respondent’s wife’s application wherein the Order recites that it was opposed by the applicant. The Order also observes that in the counter-statement filed by the respondent’s wife “she nowhere pleaded the alleged assignment”. This “alleged assignment”, according to the Order, pertains to the assignment was made by the respondent in favour of his wife relating to the “impugned trademark”.
On account of the erroneous application nos. mentioned in the Order, I am not even sure what this impugned mark is. The Order merely states that the assignment is a “sham transaction between husband and wife” because the consideration for the assignment was Rs. 50,000/- (which is “peanut” in the words of the IPAB with reference to the annual turnover of the original partnership being over Rs. 1 crore). This consideration of Rs. 50, 000/- was alleged presumably by the applicant and nowhere in the Order is it mentioned whether the alleged assignment or consideration was looked into or verified by the IPAB.
I could just go on and on about the factual mishaps in this case but I choose to stop here. The Order itself is unclear as to which mark is sought to be removed given that they have cited incorrect application nos. inconsistently. The only mark that is registered and related to this case and therefore can be “removed or cancelled” is the originally filed mark “PIP” under TM no. 554681 and this is not sought to be removed. The other application which pertains to the case is caught in opposition. So which mark exactly is the IPAB Order trying to remove or cancel again?