INDIA: High Court Lifts Blanket Ban on “Statement of Use” Amendment; Registrar Must Decide Every Cas

In an important development concerning a recent order of the Controller General of Patents, Designs and Trademarks, the High Court of Delhi struck down Clause No. 3 of Office Order No. 16 of 2012-2013. This clause provided that “no request for amendment shall be allowed which seeks substantial alteration in the application for registration of a trademark. The substantial amendment in the trademark, proprietor details, specification of goods/services (except deletion of some of the existing items), [and] statement as to the use of mark shall not be permitted.” (Intellectual Property Attorneys Association v. Union of India & Anr. [W.P.(C). No. 3679/2014 & CM No. 7455/2014]).

The question that arose for consideration in the present petition was, “When the Statute…confers on the Registrar of Trademarks the power to permit the correction of ‘any error’ in or in connection with the application or to permit an amendment of the application, whether the Controller General by a general order in the nature of a guideline can direct as to which of such amendments shall not be allowed.”

While the court overruled the blanket ban on any amendment (particularly the amendment of the date of first use), it also held that the Registrar of Trademarks must decide, on a case-by-case basis, whether the amendment claimed (even if to postpone the date of commencement of use of the applied-for trademark) is merely an afterthought intended chiefly to meet the objection filed to registration, and thus an abuse of the system. However, the court said, there can be no general order that such amendments will never be allowed.

Hence, the court allowed the writ petition, which was in the nature of a Public Interest Litigation (PIL), and held that the Registrar of Trademarks must render a decision on applications for amendment to an application for registration of a trademark on a case-by-case basis.

While the court has provided relief to brand owners and practitioners by lifting the blanket ban on amendments, care must still be practiced to provide a correct statement of use, as such amendments will not be allowed as a matter of right.

Credits:

Contributor: Swati Bhanot, Chadha & Chadha, New Delhi

Verifier: Gaurav Miglani, Worldwide Intellec, New Delhi

"This article first appeared here http://www.inta.org/INTABulletin/Pages/INDIAHighCourtLiftsBlanketBanonStatementofUseAmendmentRegistrarMustDecideEveryCaseonitsMerits.aspx in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”