Restricting Substantial Alterations to Trademark Applications at Pre-Registration Stage is Valid- CGPDTM

On 8^th June 2012, the Trademarks Registry had issued certain Office orders pertaining to Pre-Registration Amendment of Trademark Application. The said order read, “No request for amendment shall be allowed which seeks substantial alteration in the registration of trademark”. This Order was challenged by the Intellectual Property Attorneys Association (IPAA). On 24^th July this year, the Controller General of Patents, Designs and Trademarks (CGPDT) dismissed the application on the grounds that prior to the order, the option of amending the application had been amenable to misuse, and restrictions on amendment are required in order to protect the bonafide rights of continuous use of the trademark by rivals in trade.

The Order specified that ‘substantial alteration’ would include amendment of the trademark, details of the proprietor, specification of goods/services, etc. However, requests in the amendment of proprietorship due to a valid assignment, or clerical errors in the address of the applicant, etc would be allowed.

The IPAA had argued that the said order went beyond the intention of the Legislature, as S.22 of the Trademarks Act allows the Registrar to permit corrections in the application any time before the application was accepted. Further, Draft Manual of Trade Mark Practice released by the Trademarks Registry itself did not mention any restriction on amendments.

The IPAA had filed this petition as they wanted to allow the amendment of the date of use of the trademark. The CGPDT analysed the implications of allowing such amendments.

It was pointed out that when an application for trademark registration is made and objections are filed under S.9 (trademark applied for registration is not capable of distinguishing the goods and services of one person from those of others…), a ground for defense that is available under the statute is that if before the date of application, the trademark had acquired a distinctive character. Another major ground for objection is S.11 (where the trademark is identical or similar to an earlier registered trademark).  In both cases, the date of usage of the trademark is vital.

The date is of special importance as even an un-registered trade mark holder has vested rights over their trademark if prior usage can be established. The IPAB decision of Titan Industries Limited v. Registrar of Trade Marks (2007) 34  PTC 346 was cited to impress upon the fact that the date of usage is a material fact, the amendment of which changes the nature of the application itself.

The CGPDT noted that it was common practice where the option to amend the application was misused by applicants. They would amend the application after objections were received, in order to incorporate prior date of usage than that of the objector. As the date from which the trademark is in use is such a vital fact about the trademark, the CGPDT found it inconceivable that a trader would make a mistake in the application as regards such date. Even if the mistake were a bonafide one, the applicant always has the option of filing a fresh application. Therefore, allowing such amendments would encourage malafide behavior in applicants and would affect the bonafide rights of continuous use of the trademark by their trade rivals.

The CGPDT’s order ended with a word of advice to traders to be alert in the market and ensure due diligence at the time of filing the application.

The Order therefore stands valid. It is reproduced here-

“No request for amendment shall be allowed which seeks substantial alteration in the application for registration of trademark. The substantial amendment in the trademark, proprietor details, specification of goods/services (except deletion of some of the existing items), statement as to the use of mark shall not be permitted, However request for amendment in the proprietorship of the trademark on the basis of valid assignment or transmission; amendment in address of the applicant or in the applicant’s address for service; deletion or confinement of any item in the specification of goods/services,- confinement/limitation in the area of sale of goods/rendering of service may be allowed.”

The ruling of the CGPDT can be found here.