The Hindu Business Line : Asugar Engg plea for trademark rectification turned down

AN order of the Assistant Registrar of Trade Marks, Ahmedabad, for rectification of a registered trademark, could not be sustained under the provisions of the Trade and Merchandise Marks Act, 1958, the Intellectual Property Appellate Board has held.

According to law, no rectification proceedings could be filed before the completion of 5 years and 1 month from the date of registration of trademark.

In the instant case, where rectification of the trademark had been ordered, the Assistant Registrar had violated Rules 95 and 53 to 60 of the Rules under the Act, the Board ruled.

First respondent (M/s Asugar Engineering Services, Pune) filed an application under Sections 46 and 56 of the Act for rectification of the Register in relation to trade mark `AZUCAR 80' viz welding electrodes (electric) and welding apparatus (electric) registered in the name of the 2nd appellant (M/s Tradechan Ltd, London).

The grounds taken were, inter alia, that the trademark had not been used at all in relation to the goods for which it was registered and that the period of more than 5 years and 1 month had lapsed since registration was taken and the mark had not been continuously used.

The appellants contended that the 2nd appellant had been supplying `Azucar 80' goods in India through its representatives, from 1983. With economic liberalisation, it was possible for the 1st appellant (M/s Afrox Ltd, S. Africa) to trade directly in India, and hence, the trademark came to be assigned to the 1st appellant. The assignment was duly ordered on January 15, 1998 by Trade Marks Registry, Mumbai.

According to appellants, the Assistant Registrar did not afford proper opportunity of representing the case to the appellants. He contradicted himself in his order. He wrote that the 1st appellant was the proprietor of the trademark, and in the order he said that the 1st appellant could not be treated as proprietor since the assignment had not been recorded.

The Board, comprising Mr Justice S. Jagadeesan, Chairman, and Dr Raghbir Singh, Vice-Chairman, at its sitting in Ahmedabad, referred to a judgement of the Madras High Court in relation to a passing-off matter between the same parties, and held that in matter of examination under Section 46(1)(b) of the Act, the Board was in a position to throw away the rectification ordered by the Assistant Registrar at threshold.

The mark was actually put on the Register on August 31, 1989 even though the deeming date of registration was taken as December 6, 1983, and the rectification application was filed on January 30, 1991. Thus, the statutory period of 5 years and 1 month as reckoned from August 31, 1989 had not been completed before the filing of the rectification proceedings.

As per evidences submitted by 1st respondent, including trade letters addressed to parties introducing her as agent of M/s Tradechan Ltd, London, for their `AZUCAR 80' welding electrodes, it was noted that the appellants' trade mark had been very well in use in India.

The Board held that there was no merit in the petition of the 1st respondent praying for rectification of the Register. The appeals were allowed.

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