Companies, individuals, and other entities can utilise the Trademark law to protect their labels, logos, emblems etc from being used by others by registering them. While the registration protects the trademarks, they are subject to revocation for a variety of reasons. The principle of trademark revocation can be regarded as a method to have a previously registered trademark deleted in part or entirely. Revocation can occur for a variety of reasons, one of which is “non-use of the trademark.”
To withdraw a trademark for non-use, the factor to evaluate is that the mark is not utilised only to maintain its registration. If this occurs, the mark will be automatically cancelled or revoked. To avoid a trademark revocation due to non-use, it is necessary to verify that the mark has been in commercial use. Aside from that, if the mark is used even once within the relevant period of 5 years and 3 months, the mark will not be cancelled for non-use. The date of admission into the register is determined by the date the certificate of registration is issued to the individual or company.
To determine non-use, one must first understand the phrase “use,” which can only be defined as “when the goods or services of the abovementioned trademarks are in sale, etc.” The trademark law stipulates that a trademark will be terminated for non-use after a period of 5 years and 3 months from the date of registration in the trademark registrar.
The Trademarks Act, 1999 in India deals with the term “use” of trademarks, and Section 47 of the Act stipulates that a registered trademark may be taken off the register if a person has filed an application with the registrar of the trademark with no intention of actually using the trademark by the individual or a company for five years, and the mark has also not been used for three months before the application is made. It can be observed in cases like J N Nicholas Ltd v Rose and Thistle, wherein Indian courts ruled that “use” does not have to indicate a physical sale; even an advertisement without the presence of the products might be considered “use.”
To protect the rights of registrants, Indian courts have established that a registered mark can be cancelled or revoked on the grounds of non-use after a period of 5 years and 3 months, but strong evidence that the mark has not been in use for 5 years and 3 months prior to the filing of the trademark cancellation must be provided.
The process of removing or revoking a registered trademark from the Register of Trademarks is known as trademark cancellation or rectification. On the grounds of non-use or incorrectly remaining on the Register, an aggrieved party can seek for trademark rectification/cancellation. An application for cancellation/rectification of a registered trademark can be submitted in the specified way and with the applicable charge with the Trade Marks Registry or the Intellectual Property Appellate Board. The application for rectification/cancellation has no statutory timeframe. The Boards are located in five cities across India: Chennai, Delhi, Mumbai, Kolkata, and Ahmedabad.
When a cancellation request is filed with the Registrar or the Appellate Board, they will send a notice to the persons involved, including the trademark owner and the registered user (s). Before the Registrar, the affected parties file counter statements to the application. Both parties are given the opportunity to defend their positions. Both parties submit evidence, and their cases are heard.
The Registrar hears both sides and issues an order based on the evidence presented by the parties. When a trademark is filed with the Registrar and the Registrar issues a cancellation order, the trademark is removed from the Registrar’s register.
The 2017 Trademarks Rules provide for cancellation forms to be lodged with the Registrar. These forms for submitting cancellation to the Registrar are included with the application. Form TM-O is filed for revoking a trademark for non-use under Section 47.
Author:
Snehal Bhatia, Research intern at IPTSE Academy & fourth-Year, Symbiosis Law School NOIDA Symbiosis Law School, Noida -Research Scholar for IPTSE Academy
