Should Sections 9 and 11 of the Indian Trade Marks Act, 1999 be limited to prosecution only?

In an order dated February 16, 2012, the High Court at Madras held that Section 9 and Section11 of the Trade Marks Act, 1999 cannot be applied for rectification of an entry of the mark from the Trade Marks Register. The Court overruled the order of Intellectual Property Appellant Board (IPAB) and observed the following:

“The grounds embodied under sections 9 and 11 of the Trademarks Act may be resorted to only when the mark is published in the official journal of the trademark registry and not after a mark is granted registration. The said principles cannot be applied for rectification proceedings.

The writ petition was filed against the order of IPAB (Respondent No. 2 in the present petition) allowing rectification of the petitioner’s registered mark “Rhizome’s Imperial Gold”, in an application filed by the Respondent No. 4 and also a proprietor of the mark “IMPERIAL BLUE”. While delivering its judgment, the Hon’ble Court followed the Anti Dissection Rule and stated that where there is a generic word like “IMPERIAL” used as a part of the mark, then in such case, the distinctive portion of the trade mark i.e. non-generic component would have to be compared and not the generic component.

This judgment has become a moot point in the Indian Trade Marks legislation for the reasons that the IPAB while deciding an application for rectification of a registered mark, often takes account of provisions of Section 9 & 11 of the Trade Marks Act, 1999 to decide on the distinctiveness or generic-ness of the mark. Therefore, it will be interesting to see the consequences of this judgment on forthcoming orders of the IPAB.