In consequence to my last post on rectification of trade marks, a senior and friend, who has prolific experience in the area, had an engaging discussion with me on the issue. For someone who has a different take and reads the law crystal clear, he brought to attention certain aspects, that to my mind, bring a twist in the tale!
Undoubtedly, rectification petitions, are an opportunity to correct certain errors or defects that may be on the Register with respect to a mark. The provision also allows for removal. However, can the provision be read so broadly as to override all authority and prudence that the Trade Marks Registry exercises while examining a mark?
To my mind, the answer is a May Be Not. The Trade Marks Registry, being a quasi judicial body, does the first round of screening by raising objections under Sections 9 and 11 of the Act. To remind ourselves, Section 9 deals in Absolute grounds for refusal while Section 11 deals in relative grounds for refusal, i.e. cases that cover deceptively similar marks.
If one were to look at the language of Section 57, the section allows “any person”. In this view, it would also allow, commoners like you and me to move a petition. This should be acceptable, since there are grounds under Section 9 that may impact one’s sentiments, such as the ground disallowing marks that are offensive to religious sentiments to be registered.
Perhaps in the Rhizome Judgment discussed, the overriding of the Authority of the Registry is what the Judge aimed to emphasize on. But what if one would really want to challenge the registrability of a mark on either of these two grounds? Could one merely adduce these on the basis of common law, without statutory backing? May be!
I have been thinking of this issue for some time now, but have not been able to find the light. On one hand, it appears that the opposition is aimed at creating a market place where competitors exercise diligence. On the other hand, what if an individual or small scale proprietor, without registered trademark rights, but perhaps long enough existence and repute, miss the opportunity to oppose?
I believe that this twist will need substantial research. I hope some trade mark practioners here, in the meanwhile, will render their valuable inputs.
Perhaps you terribly missed the grievance of the Rectificant - Section 57 doesn't allow "any person" but "any person aggrieved" and thus it would not allow commoners like you and me to move a rectification petition. Rectificant is first required to establish its grievance [which is very subjective but critical], failing which the petition is rejected outrightly. A rectification petition capable of being filed only by a person aggrieved (unlike an Opposition, which can be by any person) is perhaps the only advantage earned by the Registrant(in terms of the susceptibility of the mark for third party challenges, ofcourse in addition to the other rights) upon Registration of the mark (which confers only prima facie validity and does not guarantee it). A similar analogy can be drawn from patents where this person aggrieved can be compared to the "person interested" there, who is only allowed to file post grant opposition and/or revocation (unlike pre-grant opposition, which can be filed by any person) upon the grant of patent - which also doesn't guarantee the validity. Like in Patents, where the grounds of revocation (not post-grant opposition) are slightly wider than the grounds available for pre-grant opposition, and includes new grounds such as mis-representation, in trademarks, the grounds available for rectification under section 57 are wider in scope. I agree with you that the HC erred in not making section 9 and 11 available for grounds of rectification. I believe that when Section 57(2) says "any entry made in the register without sufficient cause" it encompass section 9 and 11 in their entirety, and by "entry wrongly remaining on the register" includes all common law grounds which are not available otherwise in the exclusive grounds of opposition under section 9 and 11. Thanks.
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