Amendment of statement of use in trademark application not permissible

In an order dated July 23 2014, the controller general of patents, designs and trademarks has disposed of a representation filed by the Intellectual Property Attorneys Association (IPAA) challenging Clause 3 of Office Order No 16 of the Indian Trademarks Registry, which states that a request for amendment of the statement of use of a trademark application is not permissible.  

The IPAA had also filed a writ petition before the High Court of Delhi (Writ Petition No 3679 of 2014) to challenge the clause. When the writ petition came up for hearing on May 29 2014, the High Court of Delhi directed the controller general to dispose of IPAA’s representation.

The IPAA made submissions in support of its representation, arguing, among other things, that any absolute restriction on the amendment of the statement of use is contrary to the provisions of the Indian Trademarks Act 1999.

The controller general, however, held that IPAA’s representation could not be accepted on the following grounds, among others:

1. the statement of use is the most vital element of a trademark application;

2. unscrupulous traders often concoct the statement of use of their trademarks and seek to amend it afterwards to overcome office objections or with the ulterior motive of preventing the good-faith use of the marks by rivals in the trade;

3. traders are expected to ensure due diligence at the time of filing a trademark application; and

4. there is the option of filing a fresh trademark application.

The controller general’s order has caused debate amongst stakeholders on account of its potential implications. India is one of the countries in which applicants must specify the date of first use of the trademark (or the date on which the trademark is proposed to be used) at the time of applying for registration. This requirement is often a hindrance for applicants who do not have such information readily available, particularly when handling voluminous global portfolios. Further, this requirement may jeopardise an applicant’s genuine prior rights against subsequent users. Moreover, it is also likely to create confusion when a combined suit for trademark infringement and passing off is filed, as the controller general’s order may not affect an applicant’s prior common law rights (to file a passing-off action), but may preclude the applicant from obtaining statutory recognition in relation to the same. However, it remains to be seen whether the controller general’s order will stand the test of time.

Adheesh Nargolkar, Shailendra Bhandare and Alisha Ganjawala, Khaitan & Co, Mumbai