In the present case, a writ petition had been filed by Adidas before the Delhi High Court, challenging the ex-parte order issued by the Intellectual Property Appellate Board’s (IPAB) dismissing the rectification application filed by Adidas under Section 47 for the removal of the ‘RESPONSE’ mark registered by the respondent.
Adidas’ RESPONSE mark has been in use in respect of footwear and apparel across various countries, and has been registered as a trademark in USA and Germany under Class 25. It appears that the applicants filed an application to register the mark in India as well, but in June 2010, found out that the mark had already been registered under the same class by the respondent –a consequent inquiry appears to have revealed that a wrong date of use had been claimed, thus prompting the applicant to file a rectification application on the ground that the mark had been registered “without any good cause or bonafide intention to use the mark”, rendering it liable to be expelled from the register under Section 47 of the Act.
In its October 2012 order, the IPAB asserted that merely claiming that the disputed mark together with the applicant’s goods are identical to that of the respondent does not entitle the applicant to be considered a “person aggrieved”. Secondly, the IPAB noted that Adidas had been unsuccessful at establishing “evidence of use” of its ‘RESPONSE’ line of products, thereby resulting in its failure to show confusion in the minds of the consuming public. But curiously enough, in a directly conflicting statement, it also simultaneously observed – “The use by the applicant if at all can be only from the year 2005” – based on an October 2004 article that quoted Adidas India’s MD announcing the launch of the RESPONSE family of products. The Board consequently dismissed the matter.
While hearing the writ petition filed by the applicant, Justice Manmohan Singh, one of the Delhi HC’s celebrated judges, pointedly ripped into the IPAB’s erroneous interpretation of the term, holding that connotation of the phrase ‘person aggrieved’ is one that must be broadly construed. The Court opined, “an applicant for registration whose trademark has been objected or refused by reason of prior registration by a third party of the same or similar or identical mark for the same goods or description of the goods or whose application for registration is opposed on the basis of prior registration of the same or similar mark by the registry is a person aggrieved”. Further, it asserted that where the disputed mark is both identical and pertaining to the same class of goods, the IPAB’s holding that there is no person aggrieved is inimical to law.
In so far as the applicant’s ‘failure’ to show evidence of use, the Court questioned the IPAB’s self-contradictory statements and held them to be contrary to facts. It went on to rebuke the Board for its failure to examine the applicant’s alleged “post 2005” use of the RESPONSE mark.
Accordingly, it set aside the order and remanded the matter back to the IPAB for reconsideration.
DECIPHERING ‘PERSON AGGRIEVED’ UNDER SECTION 47
Unlike the case in an application for trademark opposition, a rectification petition filed for the cancellation of a registered trademark may only be filed by a “person aggrieved”. Both Section 47 as well as Section 57 of the Trade Marks Act, 1999 enlist the circumstances that may permit an “aggrieved person” to file a rectification petition against a trade mark recorded on the Register, although the underlying connotation that the phrase carries with it in each of the two provisions, differ – as affirmed by the Supreme Court in Hardie Trading Ltd. & Anr. v. Addisons Paint & Chemicals Ltd (Mathews briefly looks into this here) . In the instant matter, the petition has been filed under Section 47, claiming non-use of the registered mark.
It is pertinent to note that the Delhi HC, in calling for the liberal interpretation of the wordage “person aggrieved”(under Section 47), has not set a new precedent, but only freshly punctuated the basal essence of the term itself – Indian courts have in the past adjudicated cases involving the determination of the term’s scope. The Supreme Court, in Hardie Trading Ltd. And Anr vs Addisons Paint And Chemicals Ltd upheld the test applied by Romer, J. in The Royal Baking Powder Company v. Wright, Crossley – Justice Romer categorically opined that while mere non-use of the mark does not make the entry erroneous, it entitles the person affected to file for its removal. He further observed, “An applicant must therefore show that “in some possible way he may be damaged or injured if the trade mark is allowed to stand; and by `possible’ I mean possible in a practical sense, and not merely in a fantastic view….”.
This test was once again upheld in Infosys Technologies Ltd vs Jupiter Infosys Ltd. & Anr. – the Supreme Court in this case observed, “To be an aggrieved person under Section 46 (of the Trade and Merchandise Marks Act, 1958 – corresponding to Section 47 of the Trade Marks Act. 1999), he must be one whose interest is affected in some possible way…… In Kerly’s Law of Trade Marks and Trade Names (11th edition) at page 166, the legal position with regard to `person aggrieved’ has been summarized thus : The persons who are aggrieved are all persons who are in some way or the other substantially interested in having the mark removed – where it is a question of removal – from the register; including all persons who would be substantially damaged if the mark remained, and all trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled. (emphasis added). We accept the above statement of law.”
However, what is of marked interest in this case is the identical nature of both the trademark AND the goods in question – a consideration that ought to have immediately elevated the applicant’s status to that of a “person aggrieved” without necessarily having to show proof of use and possible injury or damage. On this count, it would seem that the IPAB is stepping away from its own established precedent – in Amit Sood v. Roshan Potraits , the IPAB held – “On the issue of ‘person aggrieved’ since both the applicant and respondent own identical mark for identical good, a clear cut case is self evident to rule that the applicant has the locus to move a petition for cancellation of the impugned trade mark”(it may be worthwhile to note that the legal standard for “person aggrieved” appears to remain the same for the purposes of filing an application for rectification as well as cancellation of a trade mark under Section 47). Additionally, the Delhi HC’s observation in the instant matter directly mirrors the Calcutta High Court’s observation in Aktiebolaget Jonkoping Vulcan vs V.S.V. Palanichamy Nadar And Ors, where the Court upheld that “an applicant for registration whose trade mark has been refused by reason of prior registration by the respondent of the same or similar or identical mark for the same goods or description of the goods or whose application for registration is opposed on the basis of prior registration of the same or similar mark by the respondent, has been regarded as a ‘person aggrieved’ ” – effectively rendering fallacious the IPAB’s ruling on the issue. Interestingly, in the Calcutta HC matter, the respondent’s failure to satisfactorily show ‘evidence of use’ did not preclude him from being anointed ‘person aggrieved’.
In conclusion, the Delhi HC’s decision in this matter reaffirms that when a rectification application has been filed before the IPAB for the removal of a mark from the register under Section 47, the first consideration necessarily ought to be that of whether the applicant has the locus standi to file the application – I.e. whether he is a “person aggrieved”. Next, if the applicant is indeed an aggrieved person, he is then required to show that there had indeed been no bonafide use or intention to use the trade mark to support his plea for cancellation of the existing mark. However, in the instant matter, while Adidas’ failure to pass muster on the count of establishing evidence of use (albeit on account of the IPAB’s disregard of existing facts) may have precluded it from ultimately effecting the mark’s removal from the register, this cannot render it ineligible to qualify as a “person aggrieved” for the purpose of originally filing the application altogether, owing to the identical nature of both the mark and the goods concerned. Proving that the applicant is in fact aggrieved is a pre-requisite for the exercise of powers under Section 47, upon which, in the present case, the applicant’s ability to establish use of the mark ought to have had little or no bearing.