The Intellectual Property Appellate Board yet again chastised the Indian Trademark Registry in its Order dated 12th July, 2013 for irregular procedure. The IPAB by way of two orders of the same date has laid down the general principles governing the registrability of a mark, which is identical to an existing registered trademark. The Board stated that “having failed in its attempt to usurp the applicant’s registered trade mark, the respondent had ‘managed to secure’ the registration of the impugned mark. This situation would not have arisen if the existing registered proprietor had been given notice by the Registrar of the acceptance and the advertisement of the conflicting trademark. In the absence of a cross notice to existing registered owners, all kinds of similar or same marks get registration by default.” It was pointed out that the existing practice of the Registry is to Advertise Before Acceptance, a prima facie acceptable mark in the TM Journal by uploading it on the Registry Website. The IPAB commented that the viability of such an advertisement is not considered. The Registry fails to make allowance for small time traders and merchants all over the country who cannot be constantly on the lookout to see whether their valuable trademark rights are being usurped nor can they engage the services of trade marks practitioners on a sustained basis. The IPAB went to the extent of saying that “the Registry owes a duty to existing trademark proprietors on the Register to send an alert/notice, as and when it decides to waive a computer generated citation in the Examination Report (mostly done after offering an unsolicited hearing) even in cases where it is based on purported use of the mark by a later applicant conferring protection under Section 12”. It was also observed that if the suggested practice is neglected it would tantamount to an official disfavour against existing registered proprietors and the backlog of rectification petitions is bound to assume alarming dimensions. Further the IPAB suggested that the practice of other jurisdictions like the UK Registry, to specifically indicate in the TM Journal that the publication is in consequence of Section 12 protection, should be implemented without fail as it would lend credibility to such registrations.
The Delhi High Court had earlier ruled in “Kohinoor Paints Faridabad (P) Ltd. Vs Paramveer Singh & Anr.” - 1996- PTC (XVI)-69 that all trade marks registrations without notice to the existing registered proprietor are illegal.” The IPAB concurred with this and held that “it being the prevailing law, it is presumed that the Registrar is duty bound to act on this by giving appropriate directions, no matter what be the operational and logistic difficulties.” It was held that, if in a rectification proceeding, it is established at the threshold that no such notice was issued to a registered proprietor of the application for registration of an identical mark for similar goods/services, then the mark subsequently registered is liable to be removed/cancelled even without going into the merits of the case.
The practice of ordering advertisement of trade marks on the basis of self-serving affidavits and based on one sided hearings given to applicants for registration of new trade marks was also criticized by the IPAB as it raises prima facie doubts on the integrity of the system and casts an obvious shadow of how and why the Hearing Officers decide to magically waive objections at the show cause stage even though objections are raised in the Examination Report. The IPAB also opined, “It is imperative that grounds of waiver of objection should be put in the public domain prior to the publication of trade marks in the TM journal. That would be a transparent system of trade mark administration beyond suspicion.”
The IPAB in Panchranga International Pvt. Ltd. also held that it was wrong on the part of a respondent to secure registration of the same mark for the same goods behind the back of the applicant. The Registry had not put the applicant to notice at the Examination stage and simply advertised the respondent’s impugned mark. The IPAB commented that such a practice pollutes both the mark and the register contributing only to flourishing litigation and that ideally the respondent should have sought cancellation of the applicant’s registered trade mark, before claiming ownership over a disputed mark. The IPAB opined that on both the principles of equity and justice, under the law the respondents have no effective defense and thereby ordered the removal of the respondent’s Registered Trademark from the Register.
It can be construed from the above orders, therefore, that in case an owner of a registered trademark (which is already on record) is not given notice of an application for registration of an identical mark and the second mark gets registration without opposition from the owner of the registered trademark, the mark which obtained subsequent registration will be considered to be wrongly registered and, without even dwelling into the merits of the case, will become liable to be cancelled.