Restrictions imposed by the Indian Trademark Office for amending your trademark applications.
The issue dates back to 2nd February, 2012 and 8th June, 2012 when the Controller General of Patents, Designs and Trademarks (CG) issued an Office Order No: 1 of 2012 and Office Order No:16 of 2012 respectively, that placed restrictions on amendments that can be made to a trademark application, more importantly the restriction in respect of amending the date of usage of the trademark in India.
Clause 3 of the said order read as
No request for amendment shall be allowed which seeks substantial alteration in the application for registration of trademark. The substantial amendment in the trade mark, proprietor details, specifications of goods/services (except deletion of some of the existing items), and statement as to the use of the mark shall not be permitted. However request for amendment in the proprietorship of the trademark on the basis of valid assignment or transmission; amendment in the address of the application or in the applicant’s address for service; deletion or confinement of any item in the specification of goods/services; confinement/limitation in the area of sale of goods/rendering of service may be allowed
A representation was made by the Intellectual Property Attorneys Association (IPAA) to the CG on 11.02.2013 to recall clause 3 of the order. Not surprisingly, since there was no response from the CG, the IPAA filed a Writ Petition before the Delhi High Court (W.P.No: 3679/2014). When the matter came up for hearing the Government Counsel assured the Court that the matter would be disposed of within 6 weeks and the High Court also directed that IPAA be given an opportunity to argue the matter at a hearing in Delhi.
During the hearing held on 11.02.2014 the IPAA submissions were made and the most relevant ones were as follows.
- Section 22 of the Trademarks Act 1999 permits correction or amendment of any error in/or in connection with application any time before registration. The word “or” used between correction and amendment is for giving a broader coverage and hence there can be no absolute restriction on amendments.
- The expression “trademark” and “application” are two different expressions. Hence an amendment/correction of an application is different from amendment/correction of a trademark. The user date is part of the application and is not part of the trademark. Hence Rule 41 that restricts the amendment which substantially alters the trademark will not apply to amendment of user date.
- The imposition of the restriction in amending/correcting user date without hearing is ultra vires of the Act.
- Not allowing the amendment is contrary to the past practice of the trademark office. Additionally the Intellectual Property Appellate Board (IPAB) has recognised the amendment of use in Pidilite Industries Ltd V. Jubiliant Agri and Consumer Products Ltd & Voltas Ltd V. Debraj Dey. Reliance was also placed on the observations made by the Hon’ble Supreme Court in B.K.Narayan Pillai V. Parameshwaram Pillai & another.
In view of the submissions the IPAA argued that the order imposing absolute restrictions on amendments/correction should be recalled.
After perusing the records placed before him and hearing the advocates arguing on behalf of the IPAA, the CG observed that
- As per Sec 18 of the Act, the application for registration of a trademark is made by a person who claims to be the proprietor of the trademark. The proprietorship can be claimed only by use of the trademark or by intention to use the trademark and hence the statement of applicant regarding the use of the trademark is the most vital element of the application.
- An application for registration is examined after 6 months or more from the date of filing. In the past it has been found that after an examination report is issued with objections under Sec 9 (Absolute grounds) and Sec 11 (Relative grounds) a request for amendment of the user date is made with a purpose to overcome the objections raised by the examiner. In such circumstances an application to amend the user date cannot be taken as an application to rectify a clerical error.
- Many unscrupulous traders concoct the statement of use of a trademark and seek amendment as an afterthought with the ulterior motive of treading upon the bonafide use of trademarks by their competitors.
- The user statement plays such an important role that even a proprietor of an unregistered trademark who has used the mark has an advantage over the owner of a registered. Hence the statement of use in a trademark application has immense importance in determining the validity of a trademark.
- The clause 3 of the order was to stop the misuse of the provisions of the Act.
- The statement of use is the most vital information of the application and allowing applicants to amend it may redefine the rights of other entrepreneurs who have adopted the same or similar trademark. Accordingly the facts of the cited judgements are not relevant in this case.
- The IPAB in Titan Industries Limited V Registrar of Trademarks observed that “… any amendment which will materially change the nature of the application should not be allowed…”
- The trademark law is a merchandise law and the trader has to be alert in the market. The trader or his lawyer should exercise caution and due diligence at the time of filing the trademark application. It is inconceivable that the trader was not aware about the use of his trademark and would then come up with evidence on a later stage with evidence of use of the trademark.
- The applicant has the option to file a fresh application with the statement of use of the trademark.
The CG held that the amendment of use will adversely affect the bonafide rights of continuous use of trademark by the rivals in trade and since the balance of convenience of filing a fresh application lies in favour of the applicant the representation to recall clause 3 (restriction on the amendment/corrections) cannot be accepted.
The order was passed by the CG on 23 July, 2014 and we hope that the IPAA prefers an appeal. Even though the intention of the CG is right in preventing frivolous claims of statement of use resulting in long pending opposition proceedings/litigation before the Courts it would be stretching it a little too far to have a blanket restriction on all amendments without looking into the facts, circumstances and merits of each case. For now we have to wait and watch to see if the order is appealed and what the appropriate forum decide.