In an application for removal of three trademarks bearing registration numbers 813036, 1250483 & 1250484, Prime Cable Industries (“PCI”) succeeded in convincing the Intellectual Property Appellate Board to pass a combined order dated 7th August, 2013 for removal of three trademarks similar to that of the PCI’s trademark ‘PRIMECAB’ bearing application number 779092, which is pending registration.
PCI relied on numerous grounds for cancellation of the impugned marks, such as bonafide, continuous and extensive use of the trade mark ‘PRIMECAB’ since April, 1997, providing supporting documentary evidence such as registration certificate from the Central Sales Tax Department dated 30.07.1997 and ISI mark certificate from the Bureau of Indian Standards dated 30.10.2000. PCI also contended that all the three impugned applications by Ravin Cables Limited (RCL) were in bad faith and hence are mala fide. It was also pointed out by PCI that the first application of RCL claimed user from January, 1997 while the subsequent applications filed in 2003 have claimed an ante-dated user from December 1995 displaying that the alleged user is false and concocted.
Another suspicion raising point was that the Registrar had without registering PCI’s application for the same mark for identical goods, which was filed, much earlier to RCL’s application, granted registration to RCL’s mark, making the impugned registration against the principles of the natural justice, equity and good conscience. PCI’s contention was that the whole act is unjust and mala fide and to undo the same, the impugned marks ought to be removed from the Register.
RCL in response denied that the grant of the impugned registration is contrary to the provisions of the Act. RCL’s main contention was that the impugned mark got registration after RCL filed the evidence of use, by way of an affidavit before the Registrar at the pre-advertisement stage. RCL also contended that PCI has not made out a prima-facie case for removal of the impugned registration and that the onus of proof is on PCI for rectification, i.e., to prove that the mark was wrongly registered or is wrongly remaining on the register.
The IPAB, after finding merit in the arguments of PCI, held that PCI has a prior application that is now under opposition by RCL. The IPAB, criticizing the working of the Trademark Registry, further observed “We are truly astonished how the registry ‘manages’ to keep a prior application of the same mark for the same goods pending, while entertaining, processing advertising in the TM Journal and finally registering the impugned registration when the application under no. 779092 filed on 20th November, 1997 is under opposition by the respondent. Until the fate of that application is finally determined, it is unethical and illegal to register subsequent applications of identical marks for identical goods. The registry should not indulge in horse trading with the winner past the post taking the jackpot.
We do not wish to go into the merits of the rectification petition. In our view, the law should be applied without fear or favour. The conduct of the registry in the instant case exhibits perceived lawlessness and whimsical functioning. We have also come across cases where prior applications are wrongly abandoned to favour subsequent applications. The impugned mark cannot remain on the register even for a single minute.”
It is abundantly clear from the recent decisions of IPAB that the proprietors of a trademark must be aware of the laws governing the trademark and the laid-back attitude of the officials of the Trade Mark Registry shall not be tolerated. The laws must be applied to in essence and at every opportunity that is before, during and after grant of trademark registration.
