22 November, 2015
In a recent case, the Madras High Court quashed an order passed by the Intellectual Property Appellate Board (IPAB) issued in 2012 which directed the Registrar of Trademarks to remove the trademark ‘Rally’ for fans applied by Mahavir Home Appliances[1]. The IPAB had ordered its removal, upholding the claims of ‘Rallifan’ in favor of Kolkata-based Rallifan Ltd. The impugned marks were said to be phonetically similar.
The legal war between the parties was marked by Rallifan filing a rectification petition against Mahavir’s mark ‘Rally’, while the latter retaliated by filing a counter rectification plea. Rallifan had submitted before the IPAB that the associated trademarks of Rallifan- including one called Rallies had lapsed as they had not been renewed and that they were fighting only for the live mark ‘Rallifan’. Contesting this, Mahavir submitted that since the former’s mark Rallifan had been associated with two other marks, there cannot be any assignment of a mark without the other marks with which it was associated. While ordering removal for the mark ‘Rally’, IPAB had observed that the assignment was for the only mark that was alive; the registered proprietor had not renewed the other two marks and had allowed them to lapse.
The IPAB has now been directed to re-examine the case afresh on priority basis (the case dates back to 2006). The Court stated, “Unfortunately the matter would have to be re-examined in the context of the new factual position which has emerged before us, as one of the basis of the order itself, which is now found to be different from what persuaded the Intellectual Property Appellate Board. We are thus left with no other option except to set aside the impugned order and remit the matter back to the Intellectual Property Appellate Board for reconsideration.”[2]
Section 57 of the Trademarks Act deals with inter alia, the power to cancel or vary registration and to rectify the trademarks in the register. Sub-section 2 of the provision reads as: “Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.”
[1] W.P.No.12827 of 2012 , M/S Mahavir Home Appliances vs. IPAB, the Registrar of Trademarks & Rallifan Limited.
[2] Ibid.
For further information, please contact:
Shristi Bansal, LexOrbis
mail@lexorbis.com
