Amending Trademarks: A Critique by Chander M Lall

The recent order of the General (CG), Chaitanya Prasad disallowing substantial amendments in trademark applications has created quite the stir! Spadika first blogged on this here, outlining the key aspects of the CG decision. And I followed it up with a short note highlighting what I thought to be a welcome trend in having the executive don a judicial hat more often. I also went on to critique the CG decision for inter-alia being based on flawed assumptions.

In particular I noted: “More importantly, section 22 of the trademarks act which permits amendments to trademark applications does not leave much scope for the kind of interpretation that the CG is proffering. Or support the kind of policy based cost benefit analysis that he predicates his decision on. My guess is that a court  of law will reverse this. But we need to wait and watch.”

I ended the post by exhorting practitioners (and preferable someone from the IPAA) to send us a guest post on the pros and cons of the decision. We now have a guest post from none other than the President of the Intellectual Property Attorneys Association (IPAA), the inimitable Chander M Lall, a leading Indian IP practitioner.

I have to mention that he first send this to me as an email, and later gave me permission to post this as a guest post. In that email he also took issue with my labeling of the CG’s order as a “well reasoned order.”

I meant to call it a reasoned order (since unlike most other executive decisions, it proffered well articulated reasons). However, given that I disagreed with the reasoning, I conceded to him that my labeling of the decision as a “well reasoned” one was wrong.

When asked for his bio, this is what he stated:

“A guy like me doesn’t have much of a CV, Shamnad. I suppose for purposes of the article, these three facts are sufficient:

i) Founding partner of the firm of Lall & Sethi Advocates

ii) Current President of the IPAA

iii) Still “practicing” – to be a good lawyer and a better human being.

So, without much ado, let me give you Mr Lall’s critique of the CG decision:

Permissibility of TM Amendments: The Lall Critique

As the President of IPAA and the arguing counsel in the case, I quite clearly have a completely different opinion. I believe it is a very important issue for the IP community at large and the administrative order of the CG may have wide repercussions, hence my inclination to participate in this public debate. Please take my comments with a pinch of salt or more and a lot of humour, as the ultimate decision on what is right and wrong now vests with the Delhi High Court.  This is only a viewpoint and an opinion of a disgruntled lawyer on the losing side (A position I am quite used to being in).

So here goes. The order basically concludes that the user date in a trade mark application is the “most vital element of the application”. I don’t believe there is any dispute to this proposition at least. Now the order takes a very interesting turn. It concludes that so important is this date that “it is inconceivable that a trader would not know about the period since when his trade mark has been used at the time of filing of application” and anybody seeking an amendment to the date of user after filing an application is to be declared as an “unscrupulous trader” who only “concocts the statement of use” to get his application allowed “with the ulterior motive of treading upon the bonafide use of trade marks by rivals in trade”. All such amendments, as a matter of fact, “adversely affect the bonafide rights of  continuous use of the trademark by rivals in the trade”.   The question of evaluating the supporting evidence does not arise because all such evidence would only be what the trader “would ‘hit’ upon…at a late stage”. I am reminded of Gandhiji’s quote on General Smuts’s new law “….Under this Act our wives and mothers are …… and every man here is a …….” (I think you know the quote…hence the censoring….lest Spicy IP becomes a bit too spicy).

The order appears to conclude that since all TM-16 filers fall within this category, the Registrar has a duty to ensure that no officer at the Trade Marks Registry makes the mistake of declaring such a filer as scrupulous or bonafide. The “harmony in the decisions” must be maintained across offices. Even though the Legislature intended to allow “correction of any error” and “permit an amendment of the application” (the emphasis are purely mine) by enacting S. 22, and give a personal hearing before disallowing such corrections or amendments (S. 128), the order seems to suggest that so prevalent is this malpractice of seeking user date amendments that no hearing officer should be given the option of exercising the discretion of allowing such an amendment. Mala fide filers deserve no hearing.  After all a duty is cast on the Registrar to “stop the misuse of the provisions of Section 22”.

Of course, the balance of convenience shifts, if the very same trader files a fresh application claiming a mala fide use in a subsequent application. The very same malafide now become bona fide in the subsequent application.

The CG fortifies his order by relying upon the decision of the Titan Industries v Registrar of Trade Marks where there is a categorical finding that the TM-16 for amendment of the period of use with “mala fide intentions” as it was filed at a belated stage and there was delay of 11 years and was filed only “after receipt of the Notice of Opposition ..to gain right over the mark as prior user”.   This is in line with the mala fide practice of such filers in general. So what if the IPAB held in its order that the person filing the TM-16 “could have taken out the application at the pre-advertisement stage itself if they had been really interested and vigilant”. Of course, since that was an opposition proceeding, the IPAB concluded that “amendment which is of such nature as to displace the other party cannot be allowed.”

The mala fide practice is to be curtailed, even if the ratio set out in the Titan case was that: “Procedural laws are intended to facilitate and not to obstruct course of substantive justice.  However, negligent or careless may have been the first omission and however late the proposed amendment, the amendment should be allowed if it can be made without injustice to the other side”. While commenting on Section 22, the IPAB found that “a plain reading of the above provisions makes it clear that the Registrar of Trade Marks either before or after acceptance of the application for registration can permit the correction of any error or permit any amendment of the application. The amendment is allowed even after the publication which would not substantially alter the mark.”

If you read the order, IPAA had argued that a date of user is a part of the “Application” and not a part of the “Mark”. Hence, even substantial alterations to the applications can be allowed.

It is nobody’s case that all amendments to the date of use should be allowed. In all fairness, it should be nobody’s case that all such amendments should be disallowed.  Let us wait and see how the Delhi High Court rules.