The Hindu Business Line : `Cancellation of trademark legally tenable due to non-use'

A PLEA for cancellation of a registered trademark was legally tenable if the registration was made without intention to use the trademark followed by non-use, the Intellectual Property Appellate Board has held.

Also, a cancellation was possible if the non-use was for a continuous period of five years, as specified in Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958.

While disposing of an application by a Chennai-based firm dealing in handloom towels and lungies, seeking a direction to the Registrar of Trade Marks to cancel the trademark of the respondents (P. Kamala Devi Chordia), Hexagon Frame covered under certificate of registration dated August 10, 1982, the Board said that while the respondent's trademark was registered as early as 1982, the applicant had filed the present application in 1998, after a lapse of 16 years.

The burden of proof was on the applicant for rectification to show that the mark was wrongly registered or was wrongly remaining on the register. The applicant had not led any evidence either on the aspect of similarity or non-user in view of the respondent's use of the mark as a composite one.

The Board was of the view that the averments in the application were contrary to the contentions in the court. In the absence of any pleading with specific details with regard to fraud, such a plea could not be entered for want of material particulars.

A perusal of Section 47 would establish that a registered trademark could be taken off the register if it was found that the registration was made without any bona fide intention on the part of the applicant for registration. It was clear that only if the registered trade mark was not used for a period of one month and five years prior to the filing of the petition for rectification, or if there was no bona fide intention on the part of the applicant for registration to use the trademark from the inception in respect of the goods for which the same was registered, then, the rectification could be ordered.

The fact remained that without changing the features of the registered trademark, the respondents were using the same with the associated mark label `144' and also with another registered word mark `PMP'. Hence, under no imagination, it could be said that the respondents had no bona fide intention to use their mark, or they stopped the use of the same.

On the allegation of fraud having been committed by the respondents, the Board said that the applicant had not led any evidence to prove her contention. In the absence of any pleading with specific details with regard to fraud, such a plea could not be entertained. It was pertinent to note that the applicant did not challenge the registration of the trademark with letters `PMP' taken by the respondents. It should be taken that the applicant had no grievance with regard to the use of the trademark with letters `PMP' by the respondents.

The Board noted that no evidence was placed that the disputed trademark consisting of the Hexagon Frame was being used by the respondents independent of the other trademark letters `PMP'. When that was so, it had to be taken that the disputed trademark had no separate identify, even according to the respondents. The Board was unable to accept the plea of the applicant that the disputed trade mark of Hexagon Frame offended Section 11(a) of the Act.

As regards the question of non-user, the respondents contended that they had never discontinued the use of the trademark, much less with any intention to abandon the same.

The Board pointed out that the respondents filed a suit in the Madras High Court and also initiated certain criminal proceedings against the applicant. Immediately, the applicant filed the appeal before the High Court for rectification of the trademark label `144' of the respondents. Thereafter, they waited for nearly three years to file this application. The conduct of the applicant clearly revealed that the rectification proceedings were only a counter blast to the infringement action taken against them by the respondents.

Consequently, the Board - comprising the Chairman, Mr Justice S. Jagadeesan, and the Vice-Chairman, Dr Raghbir Singh - dismissed the application as devoid of any merit.

More Stories on : Courts/Legal Issues | IPR | Tamil Nadu

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