Whether Statements Made to the Trademarks Office During the Prosecution of a Trademark Can Be Used Against the Trademark Proprietor
The statements made by the applicant or trademark proprietor to the Trademarks Office can influence the scope of the trademark registration during the prosecution of a trademark. They may even be used to limit the protection granted. These statements become part of the prosecution history and may later be referenced in proceedings such as opposition, rectification, or enforcement actions, known as “prosecution history estoppel”.
In India, the Trade Marks Act 1999 does not specifically define the concept (also known as file wrapper estoppel); however, it has been recognised and applied by courts through judicial interpretations.
The concept in relation to the relevant statutory provisions has been further discussed below.
Section 18
To register a trade mark, the proprietor needs to fulfil the requirements as envisaged under Section 18 of the Act. It includes the proprietor’s requirement to furnish claims (vide form TM-A) concerning its use (if any), voluntary conditions/limitations/disclaimers, geographical restrictions, and description of goods/services.
The proprietor’s statements made at the application stage will be taken on record and considered throughout the proceedings. The statements also have long-term implications on the extent of enforceability and rights conferred through the trade mark registration. The Hon’ble Courts have referred to and applied the concept in various precedents, as discussed below.
False User Claim and Its Consequences
For example, in a trade mark application where the proprietor has claimed a false user claim / obtained registration based on forged documents in support of the user claim –
- If the defendant can establish such false user claim, the applicant/plaintiff would be estopped from enforcing its rights against the defendant’s mark based on its false user claim.
- Moreover, such false statements made at the prosecution stage of the application would also be subject to the penal provisions under the Trade Marks Act (Section 103 of the Act).
Judicial Interpretation by the Delhi High Court
The Hon’ble Delhi High Court has shed more light on the doctrine of prosecution history estoppel qua user claim in the below-mentioned case.
The Trustees Of Princeton University Versus The Vagdevi Educational Society & Ors [CS(COMM) 270/2022, I.A. 6494/2022]
The Delhi High Court stated that – “where the plaintiff has, at the time of applying for registration of its mark, declared user of the mark from a particular point of time, that declaration would ordinarily bind the plaintiff. If, however, the plaintiff is able to demonstrate, indisputably, that there is actual user of the asserted mark, by it, from a point of time prior to the user declared at the time of applying for registration, the Court cannot shut its eyes to the material used by the plaintiff in that regard”.
Section 12
In an event that, the proprietor places reliance on honest and concurrent use of its trade mark to waive off objections on relative grounds in an examination report, the proprietor is estopped from initiating infringement action against the defendant’s cited trade mark – in case, the defendant can establish that, the proprietor had prior knowledge of the defendant’s trade mark and adopted its trade mark from the defendant’s trade mark indeed with mala fide intention.
Long-Term Impact of False Statements During Prosecution
Therefore, in case, the statements made at the prosecution stage turn out to be untrue or false and made merely for short-term gains, it can lead to long-term curtailment of trade mark rights for the Applicant.
Section 9
Once, the applicant files a trade mark application and subsequent to the examination of the same, the Examiner can raise an objection under Section 9 of the Trade Marks Act, 1999, for instance, on the grounds of non-distinctiveness or descriptiveness, etc.
In order to waive off the objection, the Applicant presents their arguments in response to the Examination Report. However, the Applicant needs to be wary of the statements made therein as the same would also decide the fate of future enforcement actions of the trade mark.
Practical Implications of Statements Under Section 9
For example, the Examiner raises objections on the grounds of non-distinctiveness and the trade mark being generic and common to trade. In response, the Applicant contends that the trade mark is “distinctive” and has been arbitrarily adopted in relation to the goods and services.
Later, the Applicant would be estopped from initiating actions such as rectification or infringement against a trade mark containing the same word and claiming that it is non-distinctive.
Section 11
At the examination stage of an application, the Examiner raises objections under Section 11 of the Act, thereby citing similar or identical marks already existing in the records of the Registry.
The Applicant’s statements made in relation to the cited trade marks and their goods or services are crucial, as the same would also determine the enforcement strategy in the future.
Effect of Differentiation From Cited Marks
In case the Applicant has differentiated its trade mark from the cited trade mark or stated that the grant of the subject mark would not cause confusion or deception in the market, the Applicant would be estopped from taking a contradictory stand later.
Accordingly, the Applicant cannot later claim similarity with the cited trade mark or initiate infringement or rectification actions based on contradictory assertions.
Judicial Evolution of Prosecution History Estoppel
The principle mentioned above has been upheld in a catena of judgments, which have been briefly discussed below. Initially, the courts did not have a settled position of law on whether prosecution history estoppel shall be applicable or not.
Early Judicial View: No Estoppel Against Statute
In H and M Hennes and Mauritz AB and Ors. vs. HM Megabrands Pvt. Ltd. and Ors. [2018:DHC:3620, Delhi High Court, Judgement dated May 31, 2018], the court held that:
“Merely because the plaintiffs at the stage of seeking registration took a stand as aforesaid, cannot stop the plaintiff from exercising its statutory and natural rights. There is no estoppel against statute.”
The said observation was reiterated in Teleecare Network India Pvt. Ltd. Vs. Asus Technology Pvt. Ltd. and Ors. [2019:DHC:2889, Delhi High Court, Judgement dated May 28, 2019], where the Hon’ble Delhi High Court stated that post grant of registration of the mark, neither the examination report nor the reply to the same are relevant documents, and there is no estoppel against statute.
Furthermore, in AMPM Designs Vs. Intellectual Property Appellate Board (Mumbai Bench) and Ors. [2021 (88) PTC 338 (Bom), Bombay High Court, Judgement dated October 29, 2021], it was stated that there can be no qualm over the position in law that an erroneous admission on a principle of law by a party would have no relevance in determining rights and liabilities, as there cannot be an estoppel against a statute.
Shift in Judicial Approach (From 2023)
The direction of the wind changed in 2023 with the judgement of Raman Kwatra and Ors. Vs. KEI Industries Limited [2023:DHC:83, Delhi High Court, Judgement dated January 06, 2023].
The court held that a party which has obtained the registration of a trade mark on the basis of certain representations and assertions made before the Trade Marks Registry would be disentitled from seeking any equitable relief by pleading to the contrary. This judgement overruled Teleecare Networks India Pvt. Ltd. v. Asus Technology Pvt. Ltd. (supra).
The court further observed that it is settled law that a person is not permitted to approbate and reprobate, and a party making contrary assertions is not entitled to any equitable relief.
In PhonePe Private Limited v. Resilient Innovations Private Limited [2023:BHC-OS:2477, Bombay High Court, Judgement dated April 06, 2023], the court upheld the above-mentioned position of law and held that the principle of prosecution history estoppel was correctly invoked by the defendant. The plaintiff could not successfully claim discretionary reliefs in the backdrop of such conduct.
Further, in Vasundhra Jewellers Pvt. Ltd. Vs. Vasundhara Fashion Jewellery LLP and Ors. [2023:DHC:4960, Delhi High Court, Judgement dated July 19, 2023], the court held that:
“Hence, the reliefs sought in the present suit are barred by principles of waiver, estoppel and acquiescence. There is no similarity and therefore, the same would not create any confusion in the minds of consumers when read as a whole.”
Additionally, in Keller Williams Realty, Inc. v. Dingle Buildcons Pvt. Ltd. & Ors. [CS (COMM) 74/2019], the Delhi High Court decided against the claimant while placing reliance on the defendant’s statements made in its prosecution history, wherein the claimant had denied similarity of goods and services in its reply to the examination report.
Conclusion
It has been settled law through various precedents that a party is not allowed to approbate and reprobate or oscillate between two contradictory stands to suit its convenience.
In order to determine the initial stand and/or the conditions or limitations imposed on a trade mark, the courts often look into the statements made at the first stage, namely the trade mark application and the prosecution stage.
Therefore, the statements, user claims, conditions, and disclaimers made in the trade mark application, responses to the examination report, and show-cause hearings would heavily influence the rights the Applicant or Plaintiff may claim in a trade mark during enforcement actions.
