Cancellation of a Registered Trademark

In this modern era where our economy is becoming globalized, Intellectual Property(IP) is one of the most important aspects of our society. Trademark is one of the parts of IP, where it is designed as a mark or a symbol that helps to differentiate the product of one proprietor from the other that is trademark do indicates the brand name and the goodwill of the product(company). The Trademark act.1999 do cover the laws relating to Trademark in India. An important question does arise that “can one cancel a registered trademark?” and if the answer is yes then who all can apply for cancellation of a registered trademark moreover what all are the grounds based on which a registered trademark can be canceled. All these questions are tried to be answered in this article of mine. The process of correction and omissions did in the process of registration of the trademark is also being highlighted in this paper.

Introduction

In India, one can cancel a registered trademark, provided that the following two conditions shall be there. The conditions are as following

  • If the trademark is not in use from the last 5 years from its date of registration or if the registered trademark is not in use for 3 months preceding the time of registered application.
  • Secondly, the registered trademark can be canceled when one has registered it without the intention of using it in the mere future.

Any person can apply for the cancellation of a registered trademark before the Intellectual Property appellate board (IPAB) or the registration trademark office. In this article, the process of cancellation of a registered trademark is being highlighted.

Cancellation of a Registered Trademark

Cancellation of a registered trademark is a legal process of cancellation of a trademark where one seeks to remove the registered trademark from the registry. The procedure for cancellation of a registered trademark is prescribed under section 47 of the Trademark Act,1999. [1]

The Landmark Judgment of Section 47

In the case of Kabushiki Kaisha Toshiba v. Toshiba appliances(2008)[2] the Supreme court was of the view that a trademark is the one which eases the process of distinguishing the product of one person from the other therefore if one does not pursue the bona fide intention to use the registered mark in future, then he? she does not have a right to get it registered too. Further explaining the statement the court said that without the advertising or marketing of the product’s trademark it does not lie under the ambit of genuine use of the trademark.

The registered trademark must be used concerning the goods and services for which it was registered, doing this will prevent the registered trademark from the removal from the register under Section 47 of the Trademark Act, 1999.

Reason for Cancellation of the Trademark[3]

There are two reasons for cancellation of a trademark which are as follows-

  1. if the owner gets the trademark registered without the bona fide intension of using it in the mere future or
  2. if the owner has not used the trademark for 3 months before the date of application.

Grounds of Cancellation of the Trademark

A person can cancel the registered trademark within 5 years of registration or after 5 years of registration too. The trademark can be canceled within 5 years if the trademark is-

  • designed to defraud the public or
  • creating any kind of confusion or
  • is illustrative, etc

The trademark can be canceled after 5 years if the trademark is-

  • deprecative in nature or
  • generic(common) in nature or
  • contains obscene things, etc

Rectification of Trademark

Definition

Rectification of trademark[4] refers to the process of correcting the errors which were made during the registration of the trademark.

Reasons for rectification of trademark

  • When the owner registers such a trademark that causes a lot of confusion in the mind of others or
  • if any omission or error is made during the registration process or
  • if the owner did not pay the renewal fees at the trademark registration office, etc

Effects of rectification of trademark

The registrar or the appellate board are the concerned authorities which will decide that an option for canceling, removing, or rectifying the trademark is to be given or not provided that an equal opportunity is being given to both the parties at conflict.

Any person who is affected by the registration of the trademark can apply for rectification or cancellation of the trademark.

Who can apply for cancellation of the trademark

The registered trademark can be canceled by the owner itself or by other persons too.

Cancellation by the proprietor itself

The proprietor of the trademark id allowed to apply for the cancellation of the registered trademark if the following situation arises-

  1. if it is similar to that of the existing brands or
  2. it does create any kind of confusion or
  3. if it does infringes the public interest

Cancellation by other people

Any person other than the proprietor himself can only fill the application for the cancellation of the trademark if he/she is affected by the registry of the trademark. The grounds under which one can apply for the cancellation are-

  1. When it creates confusion or
  2. if it is being used for other purposes but not for the purpose for which it has been registered for or
  3. when someone else uses it but not the author himself, etc.

Procedure for Cancellation

Once the application for cancellation is moved to either the Registrar or the Appellate Board the next step is the issue of the notice by either the Registrar or the Appellate board to the concerned parties that is the proprietor of the trademark. The opposite party does file a counter statement against the application before the board or the registrar. After this, both the parties do file the evidence and they are being given an equal opportunity to speak upon their defense.

Once the Registrar or the board hears both sides and after looking to the evidence of the parties, passes the order which is un-bias. If the trademark is being registered under the authority of the Registrar then he makes an order of cancellation and executes the order by removing the trademark from his register. The order passed by the Registrar can be appealed further in the Appellate Board. The Appellate Board follows the same procedure as in the Civil courts.
The procedure followed by the registrar is similar to that of the procedure followed by the civil courts. If the Appellate Board does pass an order for cancellation of the trademark then an intimation is given to the Registrar to cancel the trademark. A petition can be filled in the High Court against the order of the Appellate Board.

Forms of Cancellation

According to the rules of Trademark, 2017 the application for cancellation of a trademark is to be filed before the Registrar. Besides the application for cancellation of trademark certain forms are to be filled along with it, these forms are-
1. Form TM-O: This form full-files the purpose of removal of a registered trademark by the mentioned under section 47 and 57[5] of the Trademark Act,1999.
2. Form TM – U: This is the form that stops the entry of the trademark according to the grounds specified in Section 50[6].

Conclusion

For the prevention of rectification or the cancellation of trademark, one needs to take the proper precautions that is should ensure the trademark renewal from time to time and should have the bona fide intentions to use it properly moreover should also ensure that the trademark shall not remain unused for more than 5 years. A registered trademark can be canceled by the owner himself and by other people also provided that certain conditions (above-mentioned conditions) are to be followed for the same.

References

Frequently asked questions

  1. Can one cancel a registered trademark?
  2. Explain section 47 if Trademark act,1999 with the help of case law.
  3. Can a person other than the proprietor of the trademark have a right to apply for the cancellation of the trademark? Elaborate
  4. What are the reasons for the cancellation of the trademark?
  5. Can a registered trademark be rectified? if yes then to what extent?

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