OUR INSPIRATION

The following flowchart is relevant: Office actions in processing applications for registration of trademarks

In the previous Trade and Merchandise Act 1958, there was a Section12(2) which provided as under: Section 12 in the trade And Merchandise Marks Act, 1958 “12. Prohibition of registration of identical or deceptively similar trade marks. 12 (1)———————————————– (2) Where separate applications are made by different persons to be registered as proprietors respectively of Trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any. ———————————————– The said section is not available in the new Act but Section 11(2) of the Act which provides for relative grounds of refusal provides: “————————————————2. A trade mark which— (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due course would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. ———————————————–” The Hon’ble Delhi High Court in case titled as The Narang Industries Limited vs. Mohan Gold Water Breweries Ltd. and Anr. reported as 1998 PTC (18) 755 was pleased to observe:- “———————————————-Both the applications indicated proposed user and not the actual user on different dates in their advertisement. In such circumstances, u/s. 12(2), the Assistant Registrar should have deferred the application of the respondent until after determination of the proceedings in respect of the application of the petitioner. Subsequently filed application of the respondent should have been disposed of in the light of the evidence rendered in relation to the earlier application moved by the petitioner and the opposition thereto. However, it is said that no opposition was filed to the application moved by the petitioner/appellant. Even then it would appear that the application of the applicant being filed earlier subsequent application of the respondent should have been deferred till the disposal of earlier application with or without opposition by the Assistant Registrar.” ———————————————–”

The life of a trade mark is ten years from the date of application. A trade mark application first must be granted registration but once registered, the calculation of time for 10 years has to be calculated from date of application. In the case titled as Gopal Ji Gupta vs. Union of India and Ors. reported as 259 (2019) DLT 74, the Hon’ble Court followed earlier judgments of the Hon’ble Court and observed as under: “———————————————–12. This position arises from the judgment of a Coordinate Bench of this Court in the case of Malhotra Book Depot vs. Union of India and Ors., W.P. (C) 7882/2010, decided on November 29, 2011. The said decision was taken in appeal before the Division Bench being LPA 564/2012 Union of India and Ors. v. Malhotra Book Depot, decided on February 27, 2013 wherein it was noticed that the learned Single Judge had inter alia held as under: “(a). that the Registrar in its counter affidavit, in response to the unequivocal plea in the writ petition, that the Notice in Form O3 was not received by the respondent, had merely stated that removal of the mark could not have been done without following the due process as per the provisions of law and had thus made only a presumptive statement; further, the Registrar in para 7 of the counter affidavit had admitted that in various cases O-3 Notices had not been issued; the learned Single Judge thus concluded that in the respondent’s case 0-3 Notice had not been issued as provided for in Rule 67; (b). that under Section 25 of The Trade and Merchandise Marks Act, 1958 (the Act) (which was applicable in the year 1984 when the Registration of the mark of the respondent expired), the application for renewal of the registration could be made upon receipt of the Notice in Form O-3; (c). that the Registrar could remove the Trademark from the Register and advertise the factum of removal in the Journal only after a Notice in Form O3 had been issued; (d). that the removal of the registered Trademark from the Register entails civil consequences for the registered proprietor of the mark; (e). the said removal of the registered Trademark cannot be done without prior notice to the registered proprietor in the prescribed form; (f). mere expiration of the registration by lapse of time and the failure of the registered proprietor of the Trademark to get the same renewed, by itself, does not lead to the conclusion that the same can be removed from the Register by the Registrar of Trade Marks without complying with the mandatory procedure prescribed in Section 25(3) of the Act r/w Rule 67 of the Rules; (g). removal of the registered Trademark from the Register without complying with the mandatory requirements of Section 25(3) would itself be laconic and illegal; (h). that the plea of the Registrar that the application for restoration and renewal of the mark was beyond the time prescribed in Section 25(4) and Rule 69 could not be accepted because the removal of the mark from the Register was not in terms of Section 25(3) r/w Rules 67 & 68; (i). that under the Act and the Rules, mere lapse of the time does not result in its removal and for which Notice in Form O-3 is required to be given; (j). that in the facts of the present case, since the mandatory Notice in Form O-3 had not been given prior to the removal of the mark, the application seeking its restoration and renewal could not be said to be barred by time. ———————————————- 14. In view of the position of law, it is clear that the mark cannot be removed from the Register of Trademarks without compliance with the provisions of Section 25 and Rule 67 of the Rules of 1959 which is akin to Rule 64 of the Trademarks Rules, 2002, which were in vogue when the impugned action was taken and there is no dispute that such a procedure was not followed.”

It was decided in the case titled as Visakha Chemicals vs. Mala Ram and Sons reported as 2006 (32) PTC 441 as under: “———————————————–21. The aforesaid defense raises a question as to what rights are conferred on account of registration of copyrights and what exactly the nature of copyright is. The relevant provisions regarding the registration of copyrights are Sections 44 and 45 of the Copyright Act. Section 44 says that there shall be kept at the copyright Office register in the prescribed form to be called register of copyright. Section 45 reads as under: 45(1) The author or publisher of, or the owner of or other person interested in the copyright in any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of the Copyrights for entering particulars of the work in the Register of Copyrights. (2) On receipt of an application in respect of any work under sub section (1), the Registrar of Copyrights may, after holding such inquiry as he may deem fit, enter the particulars of the work in the Register of Copyrights. It is apparent from a plain reading of Section 45 that it is discretionary with any author of any work to apply for the registration of copyrights and that registration as such does not confer any rights. There is no other provision at all in the Copyright Act which confers rights on account of registration of copyright. Therefore, copyrights exist whether the registration is done or not an the registration is merely apiece of evidence as to when a certain author started claiming copyrights in some artistic or some other work. 22. When the registration does not confer any rights it is to be seen as to how copyrights in favor of a person come into existence. Section 13 of the Copyright Act gives a clue as to how a copyright is acquired. It say that copyright shall subsist throughout India, inter alia, in case of original literary, dramatic, musical and artistic works. Therefore, emphasis is on the originality. It is, Therefore, that artistic work which is original in which copyrights can vest. ————————————————”

The Hon’ble Division Bench of Delhi High Court (in a case where the owner of P.P. Jewellers was challenging the use of trademark by a company P.P. Buildwell Pvt. Ltd. who was involved in construction business) was pleased to observe: “————————————————23. As far as the case on hand is concerned, PPJPL has been using for its jewellery trade the mark “PP Jewellers” or “PPJ” and not merely the letters PP. The brochure produced by the plaintiff in respect of the commercial complex at Pitampura shows the use of the mark “PP Towers” as a composite mark and the logo PPT. The word PP is not separately used even in the logo. The application forms issued by LR Builders for allotment of shops/office in PP Towers also reflects the same mark. Even the advertisements show that the mark was written as PP Towers and the logo as PPT. Therefore, what was being used by the plaintiffs as far as the construction activities were concerned was the composite mark PP Towers. The Defendants on the other hand uses PP as part of their corporate names PP Buildwell and PP Prime Properties. PP Prime Properties have shown that they use their corporate name on the letter head by writing their full name as Prime Properties and Promoters Pvt. Limited and it is the only in the pentagonal shaped ring that the logo with the words “PP” is used. Even this is presented very differently from the way PPJPL uses the logo PPJ or PPT. Also, PPJPL applied for registration of the mark “PP” under Class 37 only on 27th August 2004 and it stated therein that it only “proposed to use” the mark even as of that date. It is stated by learned Counsel for the plaintiffs that since then PPJPL has filed an application for amending the date of user as from 1998. Nevertheless, the plaintiffs have not shown that they used the letters PP per se from that date. Consequently it is not possible to agree with the contention of learned Counsel for the plaintiffs that “PP” by itself is a distinctive letter mark and is entitled to protection against passing off. ———————————————— 25. The profile of customers going in to purchase or book commercial spaces in malls has to be kept in mind while deciding whether there is likelihood of deception or confusion. In Harrods Limited v. Harrodian School Limited [1996] R.P.C. 697 the question was whether the proposal by the Defendant to use the name “The Harrodian School” was with the deliberate intention of deceiving the public and trading on the reputation of Harrods. a world famous departmental store in London. The Court of Appeal thought not. Lord Justice Millet said (at page 718): I am also satisfied that, even if there is scope for some limited confusion to linger in the public mind, the plaintiffs have not discharged the heavy burden of establishing a real likelihood of more than minimal damage to the plaintiffs. goodwill. I ask myself what would happen if the defendants. school were to go bankrupt or suffer a drug or sex scandal. The attendant publicity might temporarily tarnish Harrods. good name; but I cannot see any real danger that a material number of Harrods. customers would withdraw their custom. Anyone who was under the mistaken impression that Harrods was responsible for the school would surely say to myself: “They obviously have no idea how to run a school. I always thought they were foolish to try; a cobbler should stick to his last. But they run an excellent store. This wont stop me shopping there.” Damage to goodwill is not confined to loss of custom, but damage to reputation without damage to goodwill is not sufficient to support an action for passing off. The question of customers seeking commercial spaces in shopping malls named North ex Mall or West End Mall mistaking PP Buildwell or PP Prime Properties to be PPJPL or the spaces being offered there to be in PP Towers or by PPJPL is highly unlikely. ————————————————”

In the case of Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd. reported as 2014 (58) PTC 136 it was observed by the Hon’ble Court: “————————————————41. It appears that the said provision of sub-section (2) of Section 20 was incorporated in order to avoid the civil litigation before the Court and duty was cast upon the Registrar of Companies to apply its mind at the time of granting the registration of the name of the company. In the present case, it is undisputed fact that when the defendant company was incorporated in the year 2007, the plaintiff was registered proprietor of two trade marks. The trade marks and trade names used by both the parties are almost identical, thus, it is evident that the Registrar of Companies granted the registration contrary to Section 20 of the Indian Companies Act. The Registrar of Company by complying the provisions of Section 20(2) (ii) obtained the search report from the office was Trade Marks Registrations, the registration of the name of the company of defendant No. 1 would not have been issued under the mandatory provision and litigation could have been avoided however, it did not happened despite of direction issued by the Apex Court and in various other cases and mandatory provisions of various Acts. Thus it appears to Court that use of corporate name which formed part of a similar registered trademark of the plaintiff amounts to infringement and passing off the registered trademark of the plaintiff. ————————————————”

In the case titled as Lowenbrau AG and Ors. vs. Jagpin Breweries Ltd. and Ors. reported as 2009 39 PTC 627 DEL., it has observed: “———————————————-11. Section 28 of the Act while referring to rights conferred on registration begins with the words ‘registration of trade- marks shall, if valid,… ‘Rights under Section 28 flow when the registration of the mark is valid. Registration is only prima facie evidence of its validity Refer, P.M. Diesels Pvt. Ltd. v. Thukral Mechanical Works reported in MANU/DE/0238/1988 : AIR1988Delhi282. 13. A defendant can set up a defence challenging validity of registration as provided in Section 124 of the Act but the civil court trying the suit is mandated to stay the suit when in defence plea of invalidity of registration is raised, to await outcome of the rectification proceedings and if no proceeding is pending and the court is satisfied that the plea of invalidity is prima facie tenable, adjourn the case for a period of three months from the date of framing of the issues to enable the defendant to approach the authorities for rectification of the registration. Thereafter on filing of an application for rectification trial in the suit is to be stayed till disposal of the rectification proceeding (see, Section 124(2) of the Act). Sub-section 4 of Section 124 states that the suit will be disposed of on the basis of the order passed by the authorities and the question of validity of registration will be binding on the court. Sub-section (5) to Section 124, however, stipulates that the civil court will be competent to pass an interlocutory order even when procedure under Sub-sections 1 to 4 is to be followed and order of the Registrar/authorities is awaited and the suit is stayed. ————————————————”