The trademark regime in India provides for a procedure, whereby a mark may be rectified or varied. An application with such a request may arise for various reasons, including certain grounds that may have attracted rejection of the mark. Examining one such mark, is the case of Vardhman Properties Ltd. v. Vardhman Spinning & General Mills Ltd. & Anr. 2008 (37) PTC 315 (IPAB) whereby the mark "Vardhman" was slated to possess religious connotation and hence was applied to be rectified on the Register.
A rectification application had been filed for the removal of "Vardhman" from the Trade Mark Register. The mark is in use with respect to three trademarks, and the applicants to the same are Directors of a Company of Jains, who closely associate with the life, teaching and sect of "Lord Mahavira", also known as Vardhman. Further, the applicants have ten enterprises under the name Vardhman and have been continuously using the same as a trading/business name. They had also applied for the registration of "Vardhman Group" for its group of companies.
Vardhman Spinning & General Mills Ltd. (hereinafter Vardhman Spinning) had been granted in 1979. The applicants, Vardhman Properties being unaware of the same, received a legal notice in 2000 and thereby called upon to cease and desist from infringing their trademark. The legal notice was replied to stating that the business and activities of the two parties were distinctive and separate. Vardhman Spinning proceeded to move to Delhi High Court for the grant of an order of permanent injunction and the same was countered on the plea of invalidity and hence the instant rectification application.
The ground vouched in the petition was that "Vardhman" was violative of S. 9(1) (d) and 9(1)(e) of the Trade and Merchandise Marks Act, 1958 , in as much as it was not an invented word and used in Jain Mythology, for over two thousand years and hence ineligible to be Trade Mark registered. They also asserted that being another name for Lord Mahavira, granting a trademark was giving exclusive rights to some, while preventing all others from using the name. They also brought to the Registrar' attention that over two hundred and thirty three companies had sought registration with Vardhman as part of their name and logo. Hence they contended that the trademark registration in favour of Vardhman Spinning itself was invalid and barred under law.
Vardhman Spinning adopted the defence as regards the lapse of distinctiveness after the lapse of seven years, as under S.32. They contended that the mark had become their identity, they were prior users and were seeking advantage of the goodwill and reputation they had acquired. They also stated to possess copyright over the design, layout, specific pictorial representation and script. They also asserted that the mention of the word "Vardhman" involved an instant association with their enterprise, which is owed to the reputation and goodwill that it acquired as a prior user. Further, the two marks were said to be phonetically and visually identical.
Both parties presented evidence to support their respective contentions. The court in consideration of these and the contentions laid, examined the meaning of "aggrieved person" as under S. 56 of the Act. The Court observed that a liberal interpretation to the same has been drawn in the past by Courts, to include a person who has before registration used the trademark and a person against whom an infringement action is taken or threatened by the registered proprietor of the trademark. In this view, the Court rendered Vardhman Properties as a person aggrieved. The Court opined that in view of S. 32 as well as S.56 of the Act, after the lapse of seven years from the date of registration, no objection as to the mark not being distinctive cannot be raised, and hence the ground under S.9 failed to apply. The Court dismissed the application for rectification, for the three marks in question, stating that no case had been made out that invited a rectifying or varying action.
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