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Removal of a Registered Trademark in India

A trademark is a sign which is capable enough at distinguishing one's product or service from another. We generally associate symbols and colours to a particular company or product, thus it is important for that product to protect its distinguishable identity from anyone else who might want to use this identity. A trademark protection safeguards one's IP rights, basically protects this distinguishable identity. Once a trademark is registered it secures protection for 10 years from the day it has been granted. Upon renewal post 10 years, the trademark can be secured for another 10 years.

The misconception that once a trademark is registered it goes unhindered and unopposed is largely prevalent in the mass. However the Trademark Act of 1999 ensures a safeguard for situations where removal of a registered trademark is necessary. As mentioned above a registered trademark is valid until 10 years and upon renewal can last up to another 10 years, thus making the trademark perpetual in nature. The only exception to this perpetuity is when the Registry removes the trademark under certain valid circumstances.

It is to note that any aggrieved person can file an application for a removal/cancellation of a mark by the Trademark Registry by writing to the Registry with his concerns. There are several circumstances/grounds for the removal of the registered trademark.

An Aggrieved Person

Before moving to the grounds it is important to know who is an aggrieved person in other words who can file an application for removal of a mark?
In the case of Hardie Trading & Co Ltd v Addison Paints & Chemical Ltd[1], the court had interpreted who shall be an aggrieved person in respect to non use of a mark. The court stated  Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trademark and wherever the trademark if remaining of the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved."

The definition of person aggrieved under section 47 is further enhanced in the case of Cycle Corporation of Indian Limited v T I Raleigh Industries Pvt Ltd[2] wherein the Court had stated that "the expression "by any proprietor" in section 47 should not be restricted to user by the proprietor or registered user who should also include bona fide or authorized user. The legislature did not intend registered proprietor to be deprived of their property at the instance of user whose use is unregistered.

The expression, therefore, should not be restricted to user by the proprietor himself or any registered user but should also take into account bona fide authorized user".

So we can say that an aggrieved person is someone who is affected or damaged by the registration or someone who has a pending trademark for the same mark. Or, any person whose intention is to get the mark removed from the register to defend himself from the damage that it may cause. It is to be noted that the application cannot be filed anonymously, as the onus of proving the evidence lies in the hands of the applicant who is contending the removal of the mark.

Grounds of trademark removal/cancellation: As mentioned there are several grounds as to removal of a trademark, some of them are:
Misrepresentation of facts
If there is enough evidence to prove that the registration was made without any adequate cause or the registration was obtained by misrepresentation of facts to an earlier similar registered mark, then the registry has power to remove the said mark from the register.

It so happens that two marks get registered, however one mark has fraudulently misinterpreted the facts of his mark during the time of registration. This shows the malice intent of the applicant to get his trademark registered which is similar to that of an earlier registered mark.

This amounts to passing off which is not permissible under that act. Thus those trademarks have to be removed by the Registrar. This ground has been mentioned in Section 57(2) of the Act. It was well decided that misrepresenting facts at the time of registration is condoned by the court in the case of Rhizome Distilleries Pvt. Ltd. v Union of India & Ors

Removal due to Modifications

The mark shall be removed from the register if any amendments or modifications are made to any registered trademark and they do not follow the rules of the Act. There are certain permissible modifications/alterations that can be made to a trademark post being registered, but changes that alter the core and substantial nature of the mark are not allowed.

Change of word mark, logo and its colour specification, change in user date claimed, change of type of trademark, change in class of trademark and change in the description of the mark shall not be permitted by the registry. If found with enough evidence that the above mentioned changes have been made then the Registrar has the power to cancel the mark altogether.

Removal due to error by the Registry

Any error or defect in any entry in the Trademarks Register or any entry wrongly included in the Trademarks Register shall amount to revocation of the registration of the trademark. At times defaults made by the Registry can amount to a great loss and liability is on the Registrar. In order to further avoid the problems on the mark, the mark's registration gets cancelled.

Removal due to delay in Renewal

The proprietor has to file an application for renewal of trademark under form 12 to the Trademark Registry. The trademark shall be removed upon failure of renewal of the mark post 10 years of it being registered. However it is important to note that no trademark shall be removed until the Registrar has served the proprietor a notice of renewal of his trademark which is prescribed under section 25(3) of the Act. This provision mandates the Registry to send a notice to the proprietor before his time of protection is lapsed. Eventually after the notice is served, the renewal application and fees if still not filed then the Registrar shall remove the mark from the register.

Failure in renewal shall not just weaken the proprietor's position but it will also affect the licensees of the said mark. In the case of Kleenage Products Pvt ltd. v The Registrar of Trademarks & Ors the court has stated that the removal of the registered mark from the register without complying with the mandatory requirements of Section 25(3) of the aforesaid Act read with Rule 67 of the aforesaid Rules would itself be laconic and illegal. Hence upon receiving of the notice under 25(3), the proprietor should make timely renewal application.

Removal due to non compliance with Sec 9 & 11

It is important even for a registered trademark to be in compliance with Section 9 and 11 of the Act. If post registration it is found that either section 9 or 11 is not complied to, the registry has the power to expunge the mark. If the sign has totally lost its original significance as a trademark, it shall be removed from the register. Section 9 of the Act provides with the absolute grounds of refusal of registration and section 11 refers to relative ground of refusal of registration. As seen it is important to comply with these grounds to get a trademark registration and eventually you cannot violate these grounds upon granting of the registration.

Removal due to non following of procedures

There is certain filing procedure that has to be maintained throughout. After reciveing complete applications for cancellation of a trademark the registrar shall ask the registered proprietor of the mark to file his counter statement in support of his statement. This too has to be done stipulated time period and if not followed the mark shall be then and there removed. After filing of the counter statement by the registered proprietor, evidences in regards to the same shall be produced, the same shall be done under the stipulated time frame. Upon submission of the evidences, post final hearing the registrar shall pass the final order.

Once the registrar accepts and passes the order the applicant can file an appeal with the IPAB within 90 days. Time is of great importance here, any delay in filing shall lead to the cancellation of the mark.

Removal due to Non Use of the mark

Section 47 of the Act extensively discusses the removal of a trademark and imposition of limitations on the ground of non-use of a trademark. Majorly section 47 is encroached upon in respect to trademark removal.

It states three main grounds for the same:
  1. No bonafide intention: Upon receiving proof that the proprietor had no bonafide intention of using the mark, the Registry has the power to remove the said mark. A rampant filing of marks in all 45 NICE classifications is largely seen and common, however this defensive filing fails to promote the rationale behind the act as the proprietor ends up using just one or two marks out of the 45 registered. The proprietors fail to use the mark post getting a registration indirectly claiming a monopoly over the word. Thus in this and other scenarios if it is proved that the proprietor has no intention of using the mark with respect to the products and services the mark has been filed with respect to, an application for cancellation can be filed for removal of the mark, following a procedure prescribed.

  2. Non- use for 5 years: Upon receiving the proof that a registered trademark has not been in use for a continuous period of 5 years, the Registry has the power to remove the said mark. The 5 year period is calculated from the date when the Trademark is actually entered in to the register. However it is to be noted that there may be exceptions to it which has to be duly proved by the proprietor; for example a restriction imposed by the government or by any prevalent law or regulation which leads to the non use of the mark.

  3. 3 months use prior to application: There should be a bona fide use of the trademark in respect to those goods or services for three months prior to the date of filing an application for registration of the mark. So in brief the Registry has the power to cancel/remove a mark under this provision.

Determining Use & Non-Use

The discussion here has largely been about the usage and non usage of the mark and it is important to know what it means in the common parlance. There is no set mechanism to know if a mark has been continuously used or not, it depends and differs on a case to case basis. Also question in that respect arises for example is it being used if it is just virtual in nature and not physical use?

Primarily the Trademark Act makes it simpler by defining ‘use' which shall be construed as a reference to the use of the mark as printed or other visual representation, or in any physical or in any other relation whatsoever, to such goods or services. Secondly in the case of Nekumar K. Porwal v Mohanlal Hargovindas[3] the term use has been interpreted by the court as not just being present physically, however it is said that the mark is in use through an advertisement also.

It is to note that primarily the onus of proving non-use lies on the person filing the opposition, however the onus may shift on to the proprietor during the hearing and if he fails to establish his mark's usage it shall be removed. Again, the removal/cancellation of a mark is largely based on the defenses and presentation of the case.

In the case of Pfizer Products Inc v Rajesh Chopra[4], the Plaintiff had filed a suit for injunction for passing off and unfair competition. The defendant had challenged the usage of mark  GOEDON by the plaintiff. Both were claiming over the mark and the defendant contended that the plaintiff's non-use of the mark upon registration in India should be evidence enough for cancelling of the said mark. These contentions were being raised so as the defendant can use the said mark for his products.

The court however leaned in favour of the plaintiffs as they were players in the global market and it is important to understand the gravity of the mark which is used in selling of medicines, a misconception in this case could lead to a major loss.

In the case of Kabushiki Kaisha Toshiba v. TOSIBA Appliances[5] the court stated that:
The intention to use a trade mark sought to be registered must be genuine and real. Furthermore  when a trade mark is registered, it confers a valuable right. It seeks to distinguish the goods made by one person from those made by another.

The person, therefore, who does not have any bona fide intention to use the trade mark, is not expected to get his product registered so as to prevent any other person from using the same. Thus in accordance to Section 47 genuine/bonafide use shall not amount by just advertising, it shall be fair and genuine only when the advertising is coupled with marketing.

Conclusion
In my opinion unnecessary and redundant trademark litigations can be avoided by simply following the rules stated out loud by the Act. In addition to that correct precautions shall be taken into consideration like timely renewal, making sure the mark is distinctive even after the registration and ensuring usage for atleast 5 subsequent years post the registration of the mark and restraining others from infringing the mark.

End-Notes:
  1. AIR 2003SC 3377
  2. AIR 1996 SC 3295
  3. AIR 1963 Bom 246
  4. 2006 (32) PTC 301 Del
  5. 2008 (37) PTC 394 (SC)
Written By: Kahinee Bhat

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