The cancellation of a registered trademark on the grounds of non-use is a
significant aspect of trademark law, as outlined in Section 47 of the Trademarks
Act 1999. This article delves into a specific case heard by the Hon'ble High
Court of Delhi, involving the registered trademark 'BAOJI,' registered under No.
1530274 in Class 25.
Scope of Section 47 and Necessary Conditions:
Section 47 of the Trademarks Act 1999 allows for the cancellation of a
registered trademark based on non-use. However, the Hon'ble High Court
emphasized that a successful challenge under this section necessitates
demonstrating a continuous non-use for a minimum of five years from the date of
entry into the register up to three months before the application for removal.
In the case under consideration, the registration certificate for the 'BAOJI'
mark was issued on December 26, 2013, officially entering the register. The
rectification application was filed on August 10, 2020. Accordingly, the
critical date for assessing the use of the mark was set as May 10, 2020, three
months before the rectification application.
The Court's Observations:
The Hon'ble High Court scrutinized the evidence and observed that sale invoices
submitted into the record indicated consistent transactions by Respondent No. 1
using the 'BAOJI' mark from 2012 through 2022. This unbroken chain of evidence
unequivocally established a continuous and uninterrupted use of the trademark
over a significant period.
The concluding Note:
In light of the court's analysis and interpretation of Section 47, the
cancellation petition was dismissed. This case underscores the importance of
providing concrete evidence of continuous non-use within the specified timeframe
to succeed in challenging a registered trademark on grounds of non-use.
The Case Law Discussed:
Case Title: Rong Thai International Group Company Limited Vs Ena Footwear
Date of Judgement/Order:05.01.2024
Case No. C.O. (COMM.IPD-TM) 100/2021
Neutral Citation: 2024:DHC:112
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Sanjeev Narula, H.J.
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and
Email: [email protected], Ph no: 9990389539