The removal of a registered trademark on the grounds of non-use is a crucial
aspect of trademark law that ensures trademarks are actively used in commerce to
maintain their exclusivity.
This article analyzes a specific case involving the removal of the trademark "SHERRIN"
under the provisions of Section 47(1)(a) and Section 57 of the Trademarks Act,
as well as considerations of bad faith registration and habitual squatting.
Background and Facts of the Case:
The subject matter revolves around the brand name "SHERRIN," originally adopted
in 1879 by Mr. Thomas William Sherrin, who established T.W. Sherrin Pty Ltd., a
company manufacturing specially shaped footballs for Australian Football. Over
time, the company changed ownership and was eventually acquired by Russell
Brands, LLC in 2003.
The petitioner filed a cancellation petition based on the following grounds:
- Non-Use: The petitioner claimed that the trademark "SHERRIN" had not
been used in commerce for a considerable period.
- Bad Faith Registration: Allegations of the trademark's registration in
bad faith under Section 57 of the Act.
- Habitual Squatting: Accusations that the Respondent No. 1 was a habitual
squatter of well-known marks.
The petitioner also introduced evidence in the form of an investigator's
affidavit, asserting that the trademark had ceased to be used. The
investigator's findings revealed that the mark had been discontinued since 2010.
The legal analysis primarily centers around the provisions of Section 47 of the
Trademarks Act, which outlines the conditions under which a trademark can be
removed from the register due to non-use. Specifically, Section 47(1)(b)
stipulates that a registered trademark can be removed if it remains unused for a
period of five years and three months preceding the date of filing the
In the case of "SHERRIN," the court considered the timeline of events:
The impugned mark was filed on February 27, 2007, and registered on March 18,
The investigator's affidavit confirmed that the trademark had been discontinued
The rectification petition was filed in the year 2020, well beyond the
stipulated five years and three months of non-use.
The Court's Ruling:
Based on the evidence presented, the court found that the requirements of
Section 47(1)(b) were satisfied. Since the trademark "SHERRIN" had not been in
use for more than five years and three months preceding the rectification
petition, the court allowed the petition for removal.
The case highlights the importance of active and continuous use of trademarks to
maintain their registration and exclusivity. It emphasizes the legal mechanism
for removing trademarks on the grounds of non-use and underscores the need for
evidentiary support, such as investigator affidavits, to establish the absence
of use. The ruling reinforces the principle that trademarks must be used in
commerce to retain their protection, serving as a cautionary tale for trademark
holders to ensure proper utilization of their marks.
The Case Law Discussed:
Case Title: Russell Corp Australia Pty Ltd. Vs Shri Ashok Mahajan
Date of Judgement/Order:08/08/2023
Case No. CO Comm IPD TM 164 of 2023
Neutral Citation: 2023:DHC:5556
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singh, HJ
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and
Email: [email protected], Ph no: 9990389539