Vitiation of IPAB – Changes under the Trade Marks Act

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The President of India on fourth of April 2021 promulgated “The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance 2021”. This Ordinance abolishes the various tribunals set up under the following acts:

  • THE CINEMATOGRAPH ACT, 1952
  • THE COPYRIGHT ACT, 1957
  • THE CUSTOMS ACT, 1962
  • THE PATENTS ACT, 1970
  • THE AIRPORT AUTHORITY OF INDIA ACT, 1994
  • THE TRADE MARKS ACT, 1999
  • THE GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) ACT, 1999
  • THE PROTECTION OF PLANT VARIETIES AND FARMERS’ RIGHTS ACT, 2001
  • THE CONTROL OF NATIONAL HIGHWAYS (LAND AND TRAFFIC) ACT, 2002
  • THE FINANCE ACT, 2017

Intellectual Property Appellate Board (IPAB) was constituted by a gazette notification of the Central government on 15 September 2003 to hear appeals against the decisions of Registrar under The Trademarks Act, 1999 and The Geographical Indications of Goods (Registration and Protection) Act, 1999. The 2007 notifications issued by the Ministry of Commerce & Industry with respect to The Patents Act, 1970 transferred the Appellate power from High Courts to the IPAB. Later in 2017, The Finance Act as per sec 160(a) & 160(c) conferred on the IPAB the Appellate jurisdiction over the matters covered under The Copyright Act, 1957. Similar transitional provision was also invoked under sec 59 of The Protection of Plant Varieties and Farmers Act 2001, conferring the IPAB to exercise jurisdiction on appeals as per section 56 of the Act.

Changes Brought out by the The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance 2021 to the Trade Marks Act, 1999.

  • As per omitted Section 83 of the Trade Marks Act 1999, the Central Government by notification had established the Intellectual Property Appellate Board (IPAB). With the passing of The Tribunals Reforms (Rationalization and Conditions Of Service) Ordinance 2021, the IPAB stands abolished, and the powers of the IPAB under the Trade Marks Act 1999 have been transferred to the Registrar of Trademarks and the High Courts.

 

Powers Conferred to the Registrar of Trademarks and the High Court.

  • The Registrar or the High Court may deem a trademark to be on the register, even after removal of the mark from the register for failure to pay the renewal fee.
  • The Registrar or the High Court may require an applicant to furnish security in cases of marks proposed to be used by a company to be formed, registered user, etc.
  • To remove a mark from the Register and to impose limitations on grounds of non-use.
  • To accept the use of a registered associated trade mark, or any such other marks as an equivalent use of a registered trade mark in question.
  • To vary registration and rectify the register on an application by any person aggrieved.
  • To regard the application of a certification mark, to like considerations as if the application were for any other trade mark.
  • To admit evidence in any proceedings, of the usages of the trade concerned and any relevant mark used by other persons.

 

1. Effect of removal from register for failure to pay fee for renewal to the satisfaction of the Registrar or the High Court.

In the cases where a trade mark has been removed from the register for failure to pay the renewal fee, it shall be deemed to a trade mark already on the register, for the purpose of any application for the registration of another trade mark during one year next after the date of the removal. the Registrar or the High Court may not deem such mark as already on the register if it is satisfied that there has been no bona fide trade use of the existing trade mark for preceding two years, or there would be no deception caused with the use of the new mark applied for. (section 26)

2. The Registrar or the High Court may require an applicant to furnish security in certain cases of marks proposed to be used by a company to be formed, registered user, etc.

A trademark application shall not be refused nor permission for such registration shall be withheld by the registrar only on the ground that it appears that the applicant does not use or propose to use the trademark, unless he is satisfied that it is to be used by a subsequently incorporated company or by a registered user after the registration of such mark. And in such cases the Registrar or the High Court may require the applicant to give security for the cost of proceedings relating to any opposition or appeal and may, in default of such security being duly given, treat the application as abandoned. (section 46)

3. Removal from the register and imposition of limitations on ground of non-use by the Registrar and the High Court.

On an application to the Registrar or the High Court by any person aggrieved, a registered trademark may be taken off the register in respect of the goods or services in respect of which it is registered on the grounds that mark had been obtained without any bona fide need and on the grounds of non-use of the mark proposed to be used. the Registrar or the High Court may refuse such application to take down the trademark, if bona fide use of the said mark is showed by the proprietor, or in cases where applicant had been permitted under section 12 to register an identical or nearly resembling trademark. The Registrar or the High Court may also impose limitations on extend of use of the existing marks if it is satisfied that such marks has not been used for a long time, and permit a subsequent applicant to use an identical or nearly resembling trademark under section 12. According to old section 47 this power was vested with Registrar alone.

4. Power of the Registrar and the High Court in proving the use of a registered trade mark.

Where under the provisions of the act, use of a registered trade mark is required to be proved, the Registrar or the High Court may if it thinks right, accept the use of a registered associated trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved. (section 55)

5. Power of the Registrar and the High Court to vary registration and rectify the register.

The Registrar or the High Court may on an application made to it in the prescribed manner, by any person aggrieved, make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the registered in relation thereto. And the Registrar or the High Court may order making of any entry wrongly omitted, expunging any wrong entry or varying any error or defect in the register, on an application by any aggrieved person. According to old section 57 this power was vested with Registrar alone.

6. Power of the Registrar and the High Court in applications for registration of certification trade mark.

When dealing with an application made to the registrar for a registration of certification of trade mark, the Registrar or the High Court as the case may be, have regard to the like considerations, as if the application were application under section 18 of the act and to any other considerations relevant to applications, including desirability of securing that a certification trade mark shall comprise some indication that it is a certification trade mark. According to old section 71 this power was vested with Registrar alone.

7. Admission of evidence by the Registrar and the High Court in certain proceedings.

In any proceeding relating to a trade mark, the Registrar or the High Court, as the case may be shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get up legitimately used by other persons. (section 144)

 

Powers Conferred to the High Court

  • To Hear appeals from the decision, order of the Registrar.
  • To communicate to the registrar about every order or judgement of the High Court.
  • To stay the proceedings when invalidity of registration is pleaded by the accused.
  • When invalidity of registration is pleaded by the infringing party in an infringement suit, he may be allowed to file an application for rectification only before the High Court.
  • To issue Certificate of validity of registration to the registered proprietor of the trade mark.

1. Appeals shall lie to the High Court.

Appeals from the decision, order of the Registrar under this act or the rules made thereunder may be preferred to the High Court within three months from the date on which the order or decision sought to be appealed against is communicated to the person preferring the appeal. (section 91)

2. Power in Rectification of the register.

A certified copy of every order or judgement of the High Court relating to a registered trade mark shall be communicated to the Registrar by the High Court and the Registrar shall give effect to the order of the High Court and shall, when so directed, amend the entries in, or rectify the register in accordance with such order. (section 97)

3. Power of the High Court in procedures where invalidity of registration is pleaded by the accused.

When a person is accused of applying false trade marks, trade descriptions, etc or of selling goods or providing services to which false trade mark or false trade description is applied, or is convicted for subsequent commission of the above said acts, and he pleads in his defence the invalidity of the registration of the trade mark, he may be enabled to file an application before the High Court within 3 months for rectification of register on the ground that the registration is invalid, and the court shall stay the proceedings till the disposal of the rectification application. And if the accused had already filed such application before his conviction of the said offences, and such proceedings is pending before the Registrar or the High Court, as the case may be, the court shall stay the further proceedings pending the disposal of the rectification application. (section 113)

4. Power of the High Court in procedures where invalidity of registration is pleaded by the infringing party.

Where in an infringement suit, the defendant pleads that the registration of the plaintiff’s trade mark is invalid, or when the defendant takes defence under the heads mentioned in section 30 and the plaintiff pleads invalidity of the defendant’s trade mark, such person pleading may be enabled to file an application only before the High Court for rectification of register on the ground that the registration is invalid. And if such application is filed prior to the suit of infringement, before the Registrar or the High Court, as the case may be, the court shall stay the further proceedings pending the disposal of the rectification application. (section 124 & 125)

5. Power of High Court to issue Certificate of validity of registration.

In a proceeding for rectification of the register before the High Court, a decision is in favor of the registered proprietor of the trade mark on the issue as to the validity of the registration of the trade mark, the High Court may grant a certificate to that effect. This certificate can be used to obtain a favorable order in further proceedings where the validity of the registration is challenged. (section 141)


Authored by Sayyid Qutub

Related Post: Tribunals Reforms Ordinance 2021 and amendments to the Trade Marks Act, 1999

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