Sections 47, 57, and 124 of the Trademark Act, 1999 (hereinafter referred to as “Trademarks Act”) are intertwined and deal with the cancellation or removal of a trademark from the trademark registry.
Section 47 of the Trademark Act deals with the grounds for cancellation of a registered trademark. According to this Section, any interested person can file a petition for cancellation of a registered trademark on the grounds that the trademark was registered without sufficient cause or it is not distinctive, or that it has become generic, or it is likely to cause confusion, among other grounds.
Subsequently, Section 57 of the Trademark Act deals with the rectification of the register. This section empowers the Registrar of Trademarks to make corrections or amendments to the register of trademarks if it appears to him that there has been an error or omission in the register or if it is necessary to rectify the register for any other reason.
Section 124 of the Trademark Act deals with the effect of removal or cancellation of a trademark from the register. According to this Section, if a trademark is removed or cancelled from the register, it shall be deemed never to have been registered. The cancellation or removal of a trademark from the register shall be effective from the date of the application for cancellation or removal.
Therefore, as a result of the interesting interplay between all the abovementioned Sections, if a trademark is removed or cancelled from the register, it shall be deemed never to have been registered.
THE RECIPROCITY BETWEEN THE SECTIONS
Recently, the Delhi High Court passed an interesting order in Anubhav Jain v. Satish Kumar Jain, [2023/DHC/000233] holding that the rights under Section 57 of the Trademarks Act to seek rectification of the register, is independent of the rights under Section 124 which allows to seek a stay over the infringement proceedings when the validity of the trademark is raised as a defence. This interplay was the point of a previous controversy, that the Supreme Court addressed in the case of Patel Field Marshal Agencies v. P.M. Diesels Ltd. [AIR 2017 SCC 1388] . While dealing with a petition under Sections 57 and 125 of the Trademarks Act , the Supreme Court put an end to the controversy regarding the interplay between the right to seek cancellation of a registered mark/ rectification of the register Sections 47 and 57 vis-à-vis invalidity of the subject mark as a defense in an infringement suit under Section 124. However, the interpretation given in the Anubhav Jain v. Satish Kumar Jain [supra] was neither in conformity with the bare text of Patel Field Marshal Agencies v. P.M. Diesels Ltd.[supra] , nor with the catena of previous judgements passed by Delhi High Court Before delving deep into the ratio and judgement in the Anubhav Jain case, it is pertinent to first highlight the current position of law as laid down by the Supreme Court in 2017 and subsequently followed by the Delhi High Court.
The Supreme Court had made it abundantly clear that the right of seeking rectification of a mark under Sections 47 or 57 is subject to Section 124 of the Trademark Act, when an infringement suit pertaining to that mark is pending adjudication.
The Supreme Court made it mandatory for the party to not only raise a plea of invalidity in the suit, but also ensure that the civil courts frame issues before filing the rectification petition. Furthermore, upon abandoning such plea, Section 124(3) shall apply, and the right to seek rectification shall be lost forever. Through this judgement, the Supreme Court has overruled the dictum of the judgements on this point, i.e., B. Mohamed Yousuff v. Prabha Singh Jaswant Singh [WRIT APPEAL No.863 of 2006] and Data Infosys Ltd. v. Infosys Technologies Ltd, [FAO (OS) 403/2012] which had held that the right to seek rectification under Section 47 and 57 of the Trademark Act does not stand extinguished if in an infringement suit, the Court finds the plea of invalidity to be prima facie not tenable or if the rectification petition under Sections 47or 57 is filed after the expiry of the period given under Sections 124(2) or (3) of the Trademark Act.
Furthermore, both Section 47 as well as Section 57 of the Trademark Act 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 [Appeal (Civil) 5307-11 of 1993].
ANUBHAV JAIN CASE: A DIVERGENCE FROM THE NORM
A bare perusal of the above findings indicates that the Anubhav Jain judgement has been misinterpreted in the Patel Field Marshal case. The Supreme Court never stated that the rights under Sections 47 or57 and under Section 124 are independent. In fact, in the Patel Field Marshal case, the opposite has been held.
The Patel Field Marshal case have clearly made the rights under Sections 47and 57 subject to Section 124 by holding that if an infringement suit is pending in which the plea of invalidity is raised, the prescribed statutory authority shall only come into seisin of the matter if the court is satisfied that an issue of invalidity must be framed in the suit.
Further, if the civil court does not find a triable issue on the plea of invalidity, the aggrieved party’s remedy would not be to move under Sections 47 or 57 but to challenge the Civil Court’s order in appeal. Moreover, the abandonment of the plea of invalidity invites the application of Section 124(3), due to which the right to seek rectification is lost forever.
The findings in Anubhav Jain case are, in essence with the findings of the Delhi High Court in Data Infosys case, which has already been overruled in Patel Field Marshal case.
It is pertinent to note that the Supreme Court’s main goal in subjecting the rights under Sections 47 and 57 to Section 124 was to prevent the proliferation of lawsuits.
Additionally, the embargo under section 124(3) of the Trademark Act must apply even if the plea of invalidity is not raised at all in the lawsuit because it does so in cases where the question is not stated by the civil court. Though the literal reading of Section 124 of the Trademark Act does not support the aforesaid view, it can be logically drawn from Patel Field Marshal case, as non-raising of the plea of invalidity cannot be considered on a better pedestal than not getting an issue framed by the civil court.
On perusal of the decision in the Anubhav Jain case, a number of additional questions have also emerged, such as whether the right to file rectification has been completely abandoned or if any new cause of action in the future will once again restore the right, such as in cases of non-use of a registered trademark for a continuous period of 5 years as contemplated by Section 47 of the Trademark Act; or whether the non-application of Section 124(3) in suits of passing off in which the deceased person is a party. As a result, the decision in Anubhav Jain case has caused the Intellectual Property community to re-think and to consider whether the Trademark Act needs to be amended.
–Team AMLEGALS assisted by Mr. Vatsal Bhargava (Intern)
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