An application for rectification of a registered trade mark is required to be filed before the same Trade Marks Registry where the application for its registration was filed. The procedure before the Registrar is prescribed under Rules 92 to 101 of the Trade Marks Rules, 2002. An application under Section 57 is to be made in duplicate on TM-O (in the case of a collective mark or a certification mark) for a prescribed fee. The application is to be accompanied by a statement of case, in triplicate, setting out the nature of the Applicant’s interest, facts upon which the case is based and the relief that is sought.
Although the Registrar of Trademarks is empowered to hear rectification petitions against registered trademarks, in cases where an infringement suit is pending before a civil court and where the defendant in the suit is contesting the validity of the plaintiff’s trade mark, the power to hear applications for rectification of such trademarks vests only with IPAB and not with the Registrar.
Landmark Case: Mr. B.V. Elango Himachalapathy vs. M/s. Rank Xerox Limited & Others [decided on September 21st, 2012]
The IPAB rejected four out of seven rectification applications of B.V. Elango Himachalapathy filed against the registration of “XEROX” as a trade mark on the grounds of mark becoming generic. B.V. Elango Himachalapathy, owner of a photocopying shop initiated rectification proceedings in the Appellate Board after a suit was filed by Xerox Corporation against them in 2004. Elango contended that the word “XEROX” was now used as a common word and has become synonymous with photocopying. Thus, it has come to be used in a generic sense and has lost its distinctiveness and by acquiescence it has fallen into the public domain.
Hon’ble Mrs. Justice Prabha Sridevan observed that “XEROX” had been periodically renewed, without any objection or opposition by any party and that at least from 2003, Xerox had begun to aggressively protect its mark by campaigning it with advertisements like ‘If you use Xerox the way you use Zipper, our trade mark could be left wide open” and “If you use Xerox the way you use Aspirin, we get a headache”.
IPAB noted that though the trade mark “XEROX” had been used as a common term by the public, however Xerox Corporation was the owner of the said trade mark as was evident from its renewal and continuous use. Further, it was observed that the competitors knew of the existence of the mark “XEROX“, and had their businesses been hampered by the continuing use/existence of the mark “Xerox” in the Register, they would have protested or taken an action.
The Board therefore held that “…But we find the long continuous existence on the Register and the public acceptance of the trade mark rights when pointed out are factors which weigh with us in our exercise of discretion.”
Thus, the judicial trend, while dealing with the provisions of rectification under Section 57, has always been to keep all facts of each case under due consideration while deciding the matter.
