Rectification Proceedings- Is a disjointed approach acceptable?

A recent writ petition adjudicated by the Madras High Court, opined its view on certain crucial principles governing proceedings in Trade Marks. 

The judgment of Rhizome Distilleries Pvt.Ltd vs Union Of India, addressed two questions, which can be generalized as:

(i) Whether an entity can claim an exclusive right over an individual element ('IMPERIAL' in this case), when a trade mark consists of several matters ?

(ii) Whether the Intellectual Property Appellate Board has committed any error in allowing the cancellation/rectification application filed by applying the provisions of section 11 of the Trade Marks Act?

While the first question is well settled, the Court reiterated the well established judicial principle of entirety, albeit in its own words.

As far as the second question goes, the Court concluded as below:

“But, all of a sudden, the 4th respondent filed an application under section 57 of the Act for rectification of the registration and the Board by applying the principles embodied under sections 9 and 11 i.e.the grounds for refusing the registration, allowed the application filed by the 4th respondent. … Further, in our considered opinion, the grounds embodied under sections 9 and 11 are available to the persons only at the time when they raise objection for registering the trade mark. The said principles cannot be applied for rectification of the registration”

This extract demand that one thoroughly revisit the statute, in order to adjudge the accuracy of the Hon’ble High Court’s opinion.

To revisit the provisions under a tug here, S. 57 of the Trade Marks Act, 1999 deals with the Power to cancel or vary registration and to rectify the register. Under Sub-section 2 of the provision, reads:

“Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.”

This provision, without limitation as to time (in contrast to opposition), allows a third party to have an entry pertaining to a mark rectified. As I read the provision, for removals, all that a third party needs to demosrate is that the mark remains or is entered either:

(a) without sufficient cause; or

(b) wrongly/in error; or

(c) exists a defect in the entry in the register.

With respect to S. 9 and S. 11, the two provisions constitute conditions for Registration. The former provision covers absolute grounds for refusal, while the latter governs relative grounds for refusal.

While these provisions, constitute vital conditions for registration,. How can they not be used to meet the demands of a rectification petition? It is strange, because if these conditions have by error, defect, without sufficient cause or, even deceit been shown to be satisfied, shouldn’t third parties be given an opportunity to challenge them?

Undoubtedly S. 9 and 11 come up as objections during Examination, but the Act, no where restricts these to be considerations to be looked at only during that stage of prosecution. Further, distinctiveness, which is the first consideration under Absolute grounds for refusal, is a volatile c oncept- volatile because a mark which is devoid of distinctiveness to start with, may become so vide extensive use; or, the use of an extremely distinctive mark, can make it generic! 

In light of this, shouldn’t the conditions for registration be given its due, throughout the course of enforcement of one’s rights in a trade mark?

In my view, the reading of the statute by the Hon’ble court is disjointed and fragmented, thus ignoring the basic tenets constituting the very foundations of Trade Mark law. To my eyes, the provision acts as a check, by giving third parties an opportunity beyond opposition, to rectify entries on the Trade Marks Register, after due consideration by the Registrar or the IPAB.