Monday, September 24, 2012

IPAB Upholds the Trademark “Xerox”

In a decision delivered on September 21, 2012, the IPAB has dismissed 4 out of 7 rectification petitions filed by Mr.B.V.Ilango Himachalapathy against trademark registrations on “Xerox” held by the Xerox Corporation. The primary ground for seeking rectification was “genericide”.

In Para 19, the IPAB sums up its conclusions as follows:
19. To sum up:
a) The response from High Courts, Government organizations, public sector undertakings, universities etc. acknowledging the trademark rights of the respondent proves that the mark had not become generic;
b) The mark had been on the Register since 1963 and continuously renewed without opposition.
c) After 40 years of continuance in the Register, the respondent has been called upon to prove use and we are of the opinion that they have proved their user almost to the date of user claimed in these particular facts of this case. However, the user so proved relates only to Class 09 – application No.217825 in ORA/199/2009/TM/KOL, Class 07 – application No.217824 in ORA/200/2009/TM/KOL, Class 01 – application No.155627 in ORA/204/2009/TM/KOL, Class 09 – application No.546220 in ORA/291/2009/TM/DEL. Hence these rectifications are dismissed.
For the other three marks in Class 03 – application No.254546 in ORA/202/2009/TM/KOL, Class 16 – application No.217826 in ORA/201/2009/TM/KOL and Class 01 – application No. 217823 in ORA/203/2009/TM/KOL there is no proof. Hence these rectification applications are allowed. No order as to costs.

The basis for allowing the rectification of three registrations was absence of proof establishing use of the mark by Xerox Corp.

The issue which was dealt with in the case, in a nutshell, is- “Should trademark registrations on “Xerox” be removed/rectified on the ground that the mark had become come generic?”

The IPAB’s decision to dismiss the rectification petitions seems to have turned on the fact that several Government organizations had responded to notices from Xerox Corp by undertaking to cease and desist from using the mark “Xerox” as a substitute for photocopying.

It needs to be pointed out that such notices were sent to these organizations by Xerox Corp after the filing of rectification petitions against its registrations on the mark Xerox. The IPAB notes that the undertakings from these organizations may have actually saved the mark from losing its distinctiveness.

What is to be noted is that the IPAB upheld the trademark registrations on Xerox despite the applicant for rectification presenting over 7 volumes of evidence, including internet search results reflecting generic use of the mark Xerox. This evidence appears to have been deemed as insufficient by the IPAB to establish genericide of the mark Xerox, probably because equally compelling evidence was led by Xerox Corp in the form of undertakings from Government institutions and Courts of law.  

Further, the fact that Xerox Corp’s registrations had never been challenged by any of its competitors such as Canon was also considered by the IPAB as being demonstrative of two things:
A. None of Xerox Corp’s competitors believed that the mark Xerox had become generic
B. Existence of the registrations did not deprive competitors from using alternatives such as “photocopiers”

To me, the lesson from this case for trademark owners is that it is easier to police acts of plain and simple trademark infringement than acts which lead to genericide. The latter being more discreet, requires greater vigilance and timely action on the part of owners.  

On a different note, the IPAB decision in this case contains a good compilation of cases on the issue of genericide, which may help readers in their research on the issue.

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