Sunday, April 24, 2011

Who is a ‘person aggrieved’? Is the ‘grievance’ a ‘spark plug’ or ‘fuel’ for rectification proceedings?

Trademarks and most other forms of IP (except Patents) could be termed as subset of common law and may not necessarily require a special legislation. The special legislations were enacted primarily to impart clarity in substantive issues and enabling procedural aspects. Still, it is presumed that any substantive issue, could well be resolved by referring to the common law without help of to the special legislation, and the answer, in most circumstances, should be non-conflicting with the one obtained from the special legislation. But not always!!! The present post pertains to the issue of who is a ‘person aggrieved’ and the whether it is sufficient for an applicant in a rectification proceedings to show itself as ‘person aggrieved’ only at the time of filing or should the grievance continue until the decision of rectification? It was the moot question in the case of Infosys Technologies Ltd. v. Jupiter Infosys Ltd. and Anr. before the Hon’ble Supreme Court of India. In this case, the Respondent filed a petition for company name change during the pendency of the rectification petition, so as to remove the word ‘Infosys’ from the company name. The appellant, argued that an application for rectification, whether under Section 46 or Section 56 of the 1958 Act, can only be preferred by a ‘person aggrieved’ and the applicant must not only be a person aggrieved on the date of the application but must continue to remain a person aggrieved until such time as the rectification application is finally decided. Therefore, the appellant urged that the defendant ceased to be an aggrieved person after the filing of petition for company name change. In response, the respondent replied that as per Section 46 (1) of the 1958 Act an aggrieved person relates only to the period upto the date of the filing of the rectification application and the rights of the parties crystallized at that stage itself.

The Hon’ble Supreme Court, while considering the first issue of who is a ‘Person aggrieved’, stated that to be an aggrieved person under Section 46, the person must be one whose interest is affected in some possible way; it must not be a fanciful suggestion of grievance. A likelihood of some injury or damage to the applicant by such trade mark remaining on the register may meet the test of locus standi. The Hon’ble Supreme Court also relied on the Kerly’s Law of Trade Marks and Trade Names (11th edition) to cull out the definition of ‘person aggrieved’ at page 166 as: The persons who are aggrieved are all persons who are in some way or the other substantially interested in having the mark removed – where it is a question of removal – from the register; including all persons who would be substantially damaged if the mark remained, and all trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled.

The Hon’ble court also stated that the meaning of the phrase ‘person aggrieved’ in section 46 and section 56 have different connotations. As per the Hon’ble Court, in latter case, the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removed. Court also relied on decision of House of Lords in the matter of Powell’s Trade Mark for the definition of “person aggrieved” in this context of section 56 as: “... although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation.

On the second, and perhaps more critical, aspect of whether the person should be an aggrieved person only at the time of filing of rectification petition or the grievance should continue till the date of decision, the Hon’ble Court stated that the grievance of the applicant when he invokes Section 46(1) must not only be taken to have existed on the date of making application but must continue to exist when such application is decided. If during the pendency of such application, the applicant’s cause of complaint does not survive or his grievance does not subsist due to his own action or the applicant has waived his right or he has lost his interest for any other reason, there may not be any justification for rectification as the registered trade mark cannot be said to operate prejudicially to his interest. Therefore, not only that the applicant has to show that he is an aggrieved person as his interest is being affected but the IPAB must also be satisfied, before it directs the removal of registered trade mark, that the applicant is an aggrieved person before it invokes the power in directing the removal of the registered trade mark. This is so because the pre-requisite for exercise of power under Section 46(1) is that the applicant is a person aggrieved.

Thus, unlike other civil actions, where the cause of action may not be a continuing one and still maintainable before the Court of law, the rectification proceedings are to be ceased as soon as the person ceases to be an aggrieved person.

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