The trademark laws in India provide bona-fide proprietors of marks two chances to prevent another party from benefitting from the registration of a deceptive/identical mark. The first chance occurs when the mark is advertised before registration, in the trademark journal. If this chance is not availed for any reason there is another lifeline. After registration is granted, a rectification application can be filed. A rectification application can be filed by an 'aggrieved person' alone whereas; an opposition can be filed by any person.
The definition of an 'aggrieved person' includes a party who is directly or indirectly affected by the registration of the mark. Recently the shoe company Adidas filed for rectification and removal of the mark 'RESPONSE', registered by another party (Respondent). Adidas claimed that it had ownership of the mark 'RESPONSE' for its shoes, in U.S.A and Germany. Adidas' case was that the Respondent had not renewed its mark since 2011. Further, the Respondent was not present for the proceedings before the IPAB thus, showing that the Respondent had no interest in pursuing the matter or defending its mark and thus justifying removal of the mark from the Register.
The IPAB rejected the rectification application on the grounds that to establish oneself as an 'aggrieved person' in an ex-parte hearing, the Applicant has to show their use and reputation by placing sufficient bills and invoices on record for the IPAB's perusal. It was held that Adidas had failed to show its use of the mark 'RESPONSE' and therefore, could not be considered to be as 'person aggrieved' as a result, they were unable to show confusion or deception in relation to the mark in the minds of the public. Therefore, IPAB dismissed the application. This interpretation of the term 'person aggrieved' by the IPAB was rejected by the Delhi High Court. The Court ruled that the term 'person aggrieved' was of a broad ambit and includes a party that had been refused registration of its mark due to prior registration of a similar mark by another proprietor or what mark was opposed. The IPAB's finding that 'even when the marks and goods are identical, there is no person aggrieved' was held to be contrary in law. The Court further observed that, though the IPAB had ruled that there was no evidence as to the use of the mark 'RESPONSE' by Adidas, it had simultaneously noted that the use, if any by Adidas, was after 2005. This finding was held by the Court to be contrary to facts and therefore, the IPAB's decision was set aside and the matter was remanded back to IPAB for re-consideration.
This interpretation by the Court is a breather for Adidas as well as many other parties that have applied for rectification of marks before the IPAB and are currently not using their mark in India.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
