Citation: (T)OP(TM)/532/2023
The Hon’ble Madras High Court has, in a rectification petition, filed by the petitioner under Sections 47 and 57 of the Trade Marks Act, 1999 (“Act”) to expunge the trade mark SOLIDARE in Class 9 registered in the name of, Salahudeen Abdhullatheef, from the records of the Register of Trade Marks, held that a counter claim cannot be filed in response to such a rectification petition under the Act.
The respondent, in response to the rectification petition, filed a counter affidavit and counter claim seeking removal of the petitioner’s trademark, SOLIDAIRE, subject of Registration No. 1574746 in the same class.
The petitioner challenged the maintainability of such a counter claim and argued that neither the Act nor the rules framed under the Intellectual Property Division (IPD) Rules of the Madras High Court, 2022, provides for a counterclaim in response to rectification petition. The respondent, on the other hand, argued that the Court has wide powers under Sections 57(3) and 57(4) of the Act to including powers to decide any question that it may be necessary or expedient to decide, in particular, powers to rectify the petitioner’s trademark through a counterclaim.
The Court, while, agreeing with the petitioner’s argument that, the Act does not provide for counter claims, treated the counter claim as a fresh and separate petition and directed the learned Registrar of Trade Marks to assign a separate original petition number to the counter claim.