Rectification of the trademark register.
Section 51 of the Trademark Act, 2009 explores the provision of the cancellation, varying or rectification of the registered trademark or entry of the Register. The registration of a trademark can be cancelled or varied on the ground of any contravention of, or failure to observe a condition entered on the Register (section 51(1) of the Trademark Act, 2009). Moreover, on the ground of any entry not writing in or writing in the Register without sufficient cause or any wrong entry or any error or defect in any entry in the Register, such entry can be made, expunged or varied (section 51(2) of the Trademark Act, 2009).
Moreover, the proprietor of earlier registered trademark can file an application for being registered a trademark which by its very nature is sure to deceive the public and cause confusion and the impugned trademark is deceptively/confusingly similar to applicant’s trademark.
When the trademark is registered by deception and dishonestly and violating the sections 6, 8, 10, and 15 of the Trademark Act, 2009 that is to say the trademark is registered by way of dishonest intention, bad faith, deception, not being owner of the mark, non-compliance of the conditions in the Register or in the Trademark Act, 2009, the remedy under section 51 of the Trademark Act, 2009 can be sought.
The prior adopter and prior user enjoys a superior right in his trademark under the section 30 of the Trademark Act, 2009 and whenever any trademark is registered deceptively or confusingly similar or identical with the prior adopter and prior user’ trademark, the remedy under section 51 of the Trademark Act, 2009 can also be sought.
Removal of the trademark for non-use.
Section 42 provides the provisions for removal of the trademark on the grounds of non-use of the registered mark. The trademark can be removed from the Register on the grounds of registering the trademark in bad faith and not using the same in good faith 1 (one) month prior to the filing of the trademark application or not using the trademark 5 years or more after registration of the trademark.
However, the removal of the trademark is not to be granted when the identical or similar trademark registration is granted in the name of the applicant of the application for removal of the trademark or the trademark is used in good faith within the certain date or period. the non-use of the trademark shall not be a ground for removal of the trademark when the non-use of the trademark is occurred due to the special circumstances and no intention to abandon the business or no intention to use the trademark.
What is the special circumstances is not mentioned anywhere of the Trademark Act, 2009 and The Trademark Rules, 2015. However, Article 19(1) of the TRIPS agreement explains the special circumstances and states that import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use.
Correction and alteration of the Register.
Section 52 provides the provisions for the correction of the Register:
(a) correct any error in the name, address or description of the registered proprietor of a trademark; (b) enter any change in the name, address or description of the person who is registered as proprietor of a trademark; (c) cancel the entry of a trademark on the Register; (d) strike out any goods or classes of goods or services or classes or services from those in respect of which a trademark is Registered; (e) entry a disclaimer or memorandum relating to a trademark which does not in any way extend the rights given by the existing registration of the trademark; (f) make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him. However, the particulars of the registered user may also be corrected.
The proprietor of the trademark can file an application for altering the trademark by way of addition or deletion, but fundamental alteration is not allowable. In this instance, the Register has the discretionary power to allow or refused the application and advertise the application.
After allowing the application, it is to be advertised if the application is not advertised earlier. In the instance of the advertisement of the application, any person can file opposition case within 2 months from the date of the publication of the application and opposition case is to be disposed of by giving an opportunity of hearing to the both parties.
Who can file the rectification an application.
An aggrieved person can file the rectification application. Who is the aggrieved person is not defined in the Trademark Act, 2009 and the Trademark Rules, 2015. Generally, the aggrieved person connotes the person who has interest in the trademark registered in the Register against whom the rectification is filed.
Competent Court/Tribunal.
The rectification application can be filed before the High Court Division of the Supreme Court of Bangladesh or the Registrar (now, Director General) for cancellation of the registered trademark or rectification of the entry of the Register. The Tribunal can decide any dispute or question as to the rectification of the Register (section 51(3) of the Trademark Act, 2009).
The Tribunal has the power to remove the trademark and impose the limitation to stop the use of the trademark. If the rectification case is decided by the High Court Division, the order of the High Court Division is to be served to the Registrar who will rectify the Register in accordance with the order of the High Court Division.
Rectification case filed only before the High Court Division.
Notwithstanding containing whatsoever in Sections 42, 43(4) or 51 of the Trademark Act, 2009, section 98 of the Trademark Act, 2009 conferred the jurisdiction only upon the High Court Division of the Supreme Court of Bangladesh to dispose of the issue of validity of the trademark raised by the plaintiff or the defendant in the infringement suit.
The jurisdiction arises only when the pendency of the trademark infringement suit is in the lower court and validity of the trademark is claimed either by the plaintiff or the defendant. If the application for rectification of the Register filed under Sections 42, 43(4) or 51 of the Trademark for disposing of the issue of the validity of the trademark before the Registrar, who shall forward to the High Court Division.
Section 102 of the Trademark Act, 2009 states when the trademark infringement suit is to be stayed. When the invalidity of the trademark is claimed in the trademark infringement suit either by the plaintiff or the defendant, Section explores two situations of which one is the pending of the rectification case before the High Court Division or the Registrar, and another is no pending rectification case.
In the instance of the former, the court can stay the infringement suit till disposal of the rectification case. In the case of the later, if there is a prima facie case, the court shall frame the issue of invalidity of the trademark and gave the opportunity to file rectification case before the High Court Division and adjourned the suit for a period of 3 (three) months from the date of the framing of issue.
After filing the rectification case before the High Court Division, the suit shall be stayed till disposal of the rectification case. Otherwise, the issue of the invalidity of the trademark would be treated to be abandoned and the infringement suit will be proceeded. However, the decision of the rectification would be binding upon the parties and the infringement suit shall be disposed of in accordance with order of the rectification case. It is pertinent to mention here that rectification is not barred to pass the order of the stay, temporary injunction, direction for preserving the account, appointing the receiver or attachment of the property in the infringement suit.
Procedure for filing Rectification case under section 42, 43(4) and 51, 52, 53 or 54(3).
The Rules 18-23 of the Trademark Rules, 2015 is applicable with necessary changes for disposal of the application for rectification under section 42, 43(4) and 51, 52, 53 or 54(3) of the Trademark Act, 2009. The procedure is as follows:
- Filing application and serving.
The applicant who is the aggrieved person can file rectification application through TM-26, TM-27, or TM-27 before the Registrar (Rule 48 of the Trademark Rules, 2015) stating the grounds upon which the applicant relies (Rule 18 of the Trademark Rules, 2015). After filing the application, the Registrar will serve the application to the opposite party within 1 month.
- Counter Statement and serving.
After receipt of the application, the opposite party, controverting the allegations made in the application, will file the counter statement to the Registrar within 2 (two) months. The Registrar shall serve the counter statement to the applicant within 1 (one) month (Rule 19 of the Trademark Rule, 2015).
- Submission of Evidence by the Parties.
After receipt of the counter statement, the applicant shall submit the evidence in support of his application by way of affidavit to the Registrar and serve a copy of the evidence to the opposite party (Rule 20 of the Trademark Rule, 2015).
Failure to submit evidence, the application shall be deemed to be abandoned. Conversely, after receipt of the evidence of the applicant, the opposite party shall submit the evidence in support of his counter statement by way of affidavit to the Registrar within 2 (two) months and serve a copy of the evidence to the applicant (Rule 20 of the Trademark Rule, 2015).
Failure to submit evidence, the counter statement shall be deemed to be abandoned. After receipt of the evidence of the opposite party, the applicant may submit the reply evidence (within the periphery of submitted evidence) by way of affidavit to the Registrar within 1 (one) month and serve a copy of the reply evidence to the opposite party. Additional evidence shall not be submitted without permission of the Registrar.
- Hearing and Decision.
After concluding the submission of the evidence, the Registrar shall serve a notice to the parties for hearing (Rule 22 of the Trademark Rules, 2015) and after receipt of the notice, any party willing to appear for hearing may submit TM-7 to the Registrar within 14 (fourteen) days and failing to submit TM-7 or non-appearance in the hearing is considered to be unwilling of the party to appear in the hearing.
Thus, the case will be heard ex parte or the decision will be given without hearing or any other order may be given by the Registrar as he thinks fit. Non-appearance of both the parties is caused to be cancelled the proceeding. In the instance of the ex parte decision or cancellation of the proceeding, the Registrar may review the decision on the application of the aggrieved party.
- Communication of the decision.
After hearing the parties or ex parte, Registrar shall deliver the decision which shall be served to the parties in writing within 1 (one) month from the date of the decision (Rule 23 of the Trademark Rule, 2015).
- Appeal.
The aggrieved party can file appeal against the decision of the Registrar to the High Court Division within 2 (months) from the date of the decision or on receipt of the certified copy of the decision (Section 100 of the Trademark Act, 2009).
