Read the following case and answer the questions given at the end : One Shri Rama Krishna Bahadur the appellant in the present case, trading as M/s Om Perfumery, Makerganj, Mahatma Gandhi Road, Bhubaneshwar made an appli

CS Professional · Intellectual Property Rights - Law and Practice · PYQS · June 2017
Read the following case and answer the questions given at the end : One Shri Rama Krishna Bahadur the appellant in the present case, trading as M/s Om Perfumery, Makerganj, Mahatma Gandhi Road, Bhubaneshwar made an application to the Registrar of Trade Marks to register a trade mark by Digitally signed by name "RAMAYAN" with the device of crown in Class 3 in respect on incense sticks (agarbattis, dhoops) and perfumeries etc. One Shri Laxman Singh the respondent herein, was a dealer for the sale of the products of the appellant and was also trading as M/s Badshah Industries, Shitkohra, Purohit Colony, Bhubaneshwar. The respondent herein filed a Notice of opposition to oppose the registration of aforesaid trade mark under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the Trademarks Act, 1999 claiming that the impugned mark, being the name of a religious book, cannot become the subject matter of monopoly for an individual. The appellant was in the business of manufacturing, trading and marketing of incense sticks since 1981 and the respondent was a dealer of the appellant. The goods under the trade mark "RAMAYAN" have been advertised by him through various means including the publication of cautionary notices in newspapers, extensive use, wide advertisement and the excellent quality of the products. The trademark "RAMAYAN and the carton in which the products are sold has become distinctive in such a manner that use of the same or similar trademark or carton by any other person will cause confusion and deception in the trade and amongst the public. The sale was done through a network of dealers and distributors. The respondent was one of the dealers of the appellant. After the termination of dealership, the respondent started selling incense sticks under the trademark "RAMAYAN" written in the same style and manner. The Assistant Registrar of Trade Marks, after holding that the impugned trade mark consists of device of crown and the word "RAMAYAN" is capable of distinguishing the goods and is not included in the list of marks not registrable under the Act, by order dated 31st March, 2004, dismissed the application filed by the respondent. Taking in to account the trade mark, being the name of a religious book, cannot be a sufficient ground for refusal of registration under Section 9(2) of the Act and is not based on evidence on record that the feelings of any section of the Hindus having been hurt by its use in relation to incense sticks. Further it was submitted that the Assistant Registrar of Trade Marks rightly held that the impugned trade mark consists of device of crown and the word is capable of distinguishing the goods of the appellant and the trade mark is not included in the list of marks not registrable under the Act. It was further claimed that it has already been proved before the Court of Assistant Registrar that the appellant was using the trade mark since 1981 and hence, is the prior user in comparison to the respondent. Being aggrieved by the other passed by the Assistant Registrar, the respondent preferred an appeal before the Intellectual Property Appellate Board. On January 10th, 2005 the Board, set aside the other passed by the Assistant Registrar of Trade Marks (31-03-2004). Aggrieved by the other passed by the IPAB (10-01-2005), the appellant has filed this appeal by way of special leave before the Supreme Court of India. Appellant contended that it was unfortunate the Board, misconstrued the observations of the Standing Committee in the Eighth Report on the Trade Marks Bill, 1993. It was also contended that the Board erred in law while setting aside the judgement of the Assistant Registrar of Trade Marks while holding adversely about its distinctiveness, the mark causing deception and not having been used in an honest manner. The respondent contended that the impugned mark, being name of a religious book, cannot become the subject matter of monopoly for an individual. He further contended that the mark "RAMAYAN" is not a distinctive mark and is devoid of any distinctive character. The mark is capable of distinguishing the goods of one person from those of another. It was also contended that the mark "RAMAYAN" is not registrable since it is name of a famous and well known religious book. It was also claimed that more than 20 traders in Patna and many more are using the trade mark and thus it has become public juris. It was further submitted that the impugned mark is identical with the respondent's mark "BADSHAH RAMAYAN" which is pending registration and the impugned registration will cause harassment to other traders and purchasing public would be bound to be confused and deceived. He further added that his application for the registration of the same trade mark claiming user since 5th November, 1986 is pending for registration. The court observed that the word "RAMAYAN" represents the title of a book written by Maharishi Valmiki and is considered to be a religious book of the Hindus in our country. Thus, using exclusive name of the book "RAMAYAN", for getting it registered as a trade mark for any commodity could not be permissible under the Act. If any other word is added as suffix or prefix to the word "RAMAYAN" and the alphabets or design or length of the words are same as of the word "RAMAYAN" then the word "RAMAYAN" may lose its significance as a religious book and it may be considered for registration as a trade mark. However, in the present case, the court finds that the appellant had applied for registration of the word "RAMAYAN" as a trade mark. It also finds that in the photographs, after adding "OM's" to the word "RAMAYAN", at the top and in between "OM's and RAMAYAN", the sentence, "Three Top Class Aromatic Fragrance", is also written. Thus, it is not a case that the appellant is seeking the registration of the word "OM'S RAMAYAN" as a trade mark. Further, from the photographs, it also find that the photographs of Lord Rama, Sita and Lakshman are also shown in the label which is a clear indication that the appellant is taking advantage of the Gods and Goddesses which is otherwise not permitted. There are many holy and religious books like Quran, Bible, Guru Granth Sahib, Ramayan etc., to name a few. The answer to the question as to whether any person can claim the name of a holy or religious book as a trade mark for his goods or services marketed by him is clear 'NO'. In relation to the artistic work said to have been created, there is not doubt that both the marks are identical in design, colour, scheme and the reproduction of photographs is in such a manner that an ordinary buyer would reasonably come to a mistaken conclusion that the article covered by one brand can be the article covered by the other. Both the parties have claimed to be manufacturing units engaged in certain goods. The respondent claimed that though he had been in the business since 1980, he had developed and published the artistic work in 1986 and has also been using the mark as a trademark and claiming use since 1986 whereas the appellant herein claimed use of the trademark since 1987. However, by filing an application to the concerned authority, the appellant has claimed the use since 1981. Further, in various pleadings in the Title Suits filed by the respondent herein, the appellant herein has admitted the use and publication of the artistic mark of the respondent before the date of claim of the first use by the appellant, that is, 1987. From these facts, it is clear that the respondent herein was using the artistic mark earlier in point of time to that of the appellant herein. In view of the foregoing discussion, the Supreme Court of India do not find any irregularity in the order passed by the Intellectual Property Appellate Board consequently, the appeal fails and is accordingly dismissed. Questions: (c) Examine the requisites for registration, duration and renewal of trademark as per trademark legislation.

Answer & Explanation:

Within three months of the publication of the trade mark in the Trade Marks Journal, should the trade mark not be opposed by a third party, it will proceed for registration and the Trade Marks Registry will accordingly issue a registration certificate. Requisites of Registration The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicate so by using the symbol (R) in relation to the goods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other. The register of trade mark currently maintained in electronic form contains inter alia the trade mark the class and goods/services in respect of which it is registered including particulars affecting the scope of registration of rights conferred or disclaimers, if any; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trade mark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact. The Trade Marks Act, 1999 does not expressly list any requisites for registration of a Trade Mark. The requirements for registration and the definition of trade mark have converged. Instead of detailing requisites for registration, grounds for refusal are listed in Section 9(1), (2) and (3) & Section 11 which conversely are requisites for registration. Most of the substantive law laid down by the Trade & Merchandise Marks Act, 1958 remains valid and would hold the field in respect of administering the provisions of Trade Marks Act, 1999. From previous operation of trade mark law, four categories of trade marks were made out i.e., names, signatures, words and other distinctive marks. Most of the principles relating thereto would hold good under the new dispensation too. Now any mark which is a trade mark may be registered for any goods or services if it is not hit by any of the two categories of grounds for refusal or other specific prohibitions. The first requisite is that it should be a trade mark within the meaning of Trade Marks Act, 1999 which concept itself imports many conditions as has been mentioned earlier in the legal concept of trade mark. There emerge many conditions from the definition of trade mark in Section 2(1)(zb). The identification and distinguishing functions performed by the trade mark must be fulfilled by the mark sought to be registered as a trade mark under the Act. The next pre-requisite—distinctive character emerges from the presence of words "capable of distinguishing goods of one person from those of others" in the definition of trade mark in Section 2(1)(zb). A mark shall be trade mark only if, in addition to fulfilling other conditions in the definition of trade mark, it also satisfies the requirement of being a distinctive character. That distinctive character may be inherent or an acquired one. Purpose the Trademark System serves It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity. It guarantees the identity of the origin of goods and services. It stimulates further purchase. It serves as a badge of loyalty and affiliation. It may enable consumer to make a life style or fashion statement. Capable of Distinguishing the Goods or Services A mark which has a direct reference to the character or quality of the goods/services is considered as inherently not capable of distinguishing. If the reference to the character or quality is only indirect or suggestive, the mark may be considered as possessing sufficient degree of inherent capacity to distinguish. Thus, the legal requirements to register a trade mark under the Act are: The mark should be capable of being represented graphically. It should be capable of distinguishing the goods or services of one undertaking from those of others. Duration and Renewal of Trademark Trade mark protection in India is perpetual subject to renewal of the registration after every 10 years. The application for renewal can be filed six months before the expiry of the validity period of the trade mark. Section 25 of the Act allows registration of a trade mark for a period of 10 years. In keeping with the generally accepted international practice and to reduce the work-load of the Trade Marks Office, section 25 allows renewal of registration for successive periods of 10 years, from the date of the original registration or the last renewal. With a view to facilitate renewal of registration, section 25(3) provides for a grace period of six months for payment of renewal fee after expiry of registration, subject to the payment of the prescribed surcharge. Sub-section (4) provides for restoration of the trade mark to the register and renew of the registration on payment of renewal fees. Unlike patents, copyright or industrial designs, trade mark rights can last indefinitely if the owner continues to use the mark and seek its renewal. However, if a registered trade mark is not renewed, it is liable to be removed from the register. An application for restoration of the expired trademark can filed to the Registrar within one year from the expiration of the last registration of the trademark under Section 25(4) of the Trademark Act, 1999 accompanied by the prescribed fee. The Registrar shall while considering the request for restoration of the expired trademark look at the interest of other affected persons. Upon the restoration of the expired trademark, a notice must be sent by the Registrar to proprietor regarding such restoration and the same must be advertised in the official Journal. After the advertisement is made in the Trademark Journal regarding the restoration of the expired trademark, the Registrar invites for objection against restoration. If no such objection is made then the trademark is restored in the register for the next 10 years. In case of any objection, the Registrar conducts hearing and after hearing both the parties it passes a decision on whether to restore the trademark or not. If somebody else applies for registration of the expired trademark, then the proprietor has to file an objection against the third party who has applied for registration of the expired trademark. Restoration of an expired trademark protects the proprietor from duplicity and enables to maintain the exclusivity of the brand. If the expired trademark is not restored then the brand opens up in the market and can be exploited by anyone. Thus, in order to protect the rights of the proprietor that are attached with the trademark, it is necessary to restore the trademark. Thus, it can be said that the Trademark Act, 1999 and Trademark Rules of 2002 (further amended in 2013) provides the liberty to the proprietor of the trademark that even if the trademark has expired he can file an application for restoration of the expired trademark at any point of time only if the Registrar has not issued a notice to the proprietor in FORM 03. Should the rights holder of a trade mark come across a trade mark that is deceptively similar to their mark and which has been published in the Trade Marks Journal, they can oppose to the grant of the impugned mark within three months of the publication of the journal.

Topics: Trademark Law

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