Intellectual Property Appellate Board (IPAB), the country’s premier patent appellate body, is not happy with the Trade Mark Registry’s current practice of accepting claim of proprietorship on a mark in a reckless manner. The IPAB has asked the registry to do an internet search before allowing a mark. It has also directed the registry to take up claims on a global perspective as it has been flooded with huge number of cases involving international marks.

?We must record our unease with the registry’s current practice of accepting claim of proprietorship of the mark at face value and only from the narrow prism of the register of trademark, which in the long run needlessly sullies the registry’s image. If the suggestions made is adopted, it will send a strong signal of a robust brand protection regime prevailing in the country,? IPAB said.

The IPAB bench comprising vice chairman S Usha and V Ravi, technical member, while disposing of a case between Mandom Corporation of Japan and Fem Care Pharma on the former’s plea to expunge the ‘Gatsby’ trademark from the register said, ?It is therefore critical for the image of the registry and the quality of services rendered by it, not to be caught unaware of the dangers of reckless registration of marks without a global perspective of its action. Hence, an internet search of every application may throw light on the bonafide of adoption and use claimed thereof, apart from the current search of the register. This will also send positive signals to international brand owners planning to enter the Indian market.”

Dismissing Mandom Corporation?s plea for rectification of the trademark, the bench said the examiners of trademark now have the benefit of computers at their desk. The current practice is to conduct search amongst the registered and pending marks in the register to track identical or similar mark. The veracity of claim to the proprietorship of the mark laid down under Section 18(1) must also be checked at the examination and showcause stage itself through a proper internet search to eliminate doubts of copying someone else trade mark not in the register. ?With increasing integration of our economy with the globe, countless trademarks from BRICS, Asean and other important trading partners will seek trademark protection in India in due course,? they said.

The applicant, a Japanese company, had sought to expunge the Gatsby mark from the Register of Trade Marks. The mark was registered without any bonafide intention that it should be in respect of the goods for which it is registered. A continuous period of five years or longer has elapsed during which there is no bonafide use thereof in relation to the goods.

The impugned mark, neither on the date of the application for cancellation nor on the date of its registration, was distinctive of the goods of the registered proprietor and so barred under Section 9 of the Act in as much as ?Gatsby’ was never in fact used. The registration of the impugned mark was granted in contravention of Section 9,11 and 18(1) of the Act and is an obstruction to the continuance of the applicants business in India.