Understanding Trademark Removal in India: Grounds and Consequences

By King Stubb & Kasiva on August 1, 2023

Trademarks are signs that allow businesses to distinguish themselves, including their products and services, from competitors. In the eyes of the law, trademarks also safeguard a business’s identity from copyright infringement and prevent unauthorized usage by third parties.

The Trademark Act of 1999 contains provisions for the cancellation or removal of a trademark from the registrar’s records, as stated in Section 47 of the statute. Once a trademark is registered, it receives protection for a period of 10 years, after which it must be renewed.

Grounds For Trademark Removal

Under the Trade Marks Act 1999, there are several grounds for the removal of a trademark, including:

A. Section 47 of the Trade Marks Act 1999:

After a statutory validity period of 10 years, a trademark must be renewed. Failure to do so may result in the cancellation or removal of the trademark from the registrar of trademarks.

Other situations outlined under Section 47 include:

Lack of Bona Fide Intentions: If it is proven that the registration of the trademark was done without genuine or honest intentions regarding the goods or services offered by the applicant, the trademark may be canceled. This applies when a trademark is registered in multiple classes but practically used in only one or two classes.
Non-Usage of the Trademark: If an aggrieved party establishes that the trademark has not been genuinely used continuously for a period of 5 years from the date of registration, and for 3 months preceding the filing of the application for removal, the trademark may become liable for removal.

However, Section 47 (3) provides provisions for special circumstances, where the trademark could not be utilized due to legal restrictions or prohibitions on the sale or provision of services related to the trademark. In such cases, the trademark may still be liable for cancellation.

B. Judicial Precedents

In the landmark case of Pfizer Products Inc. v/s Rajesh Chopra[1], the plaintiff filed a passing-off claim against the defendant. The defendant asserted that they had been using the trademark for a long period. However, they failed to provide evidence supporting their claim, leading the court to favor the plaintiff based on the balance of convenience.

Despite the defendant’s global operations in 40 countries, the plaintiff successfully established that their trademark was wrongly used in the global market. As a result, the court ruled in favor of the plaintiff, stating that the trademark should not be removed from the Registrar.

In another significant case, Kabushiki Toshiba v/s Toshiba Appliances[2], the court emphasized that the intention to use a sought-to-be-registered trademark must be bona fide, genuine, and real. If a person lacks a valid intent to use the trademark, registration should not be granted.

C. Removal from the Registrar due to modifications in the Trade Mark

As per the law governing trademarks in India, a trademark may be removed from the register if unauthorized or illegal amendments or modifications are made to it, violating the provisions of the act. While minor structural changes in the trademark are permissible, any substantive change that fundamentally alters the trademark’s overall framework can lead to the trademark being entirely struck off.

Substantive changes encompass alterations in color specifications, changes in the type or class of the trademark, modifications in the description, logo changes, and similar significant modifications.

D. Removal due to non – compliance of the procedures

The Trade Marks Act provides specific guidelines that govern the filing procedure throughout the trademark’s existence. In the event of a valid objection to a trademark, the registrar allows the mark holder a specified period to present evidence and file written submissions.

Failure to adhere to the time period for submitting the required written statements and providing sufficient evidence may lead to the cancellation or removal of the trademark. It is crucial for trademark holders to comply with these procedures to ensure the continuous protection of their intellectual property rights.

Conclusion

The Trade Marks Act of 1999 emphasizes that granting and registering trademarks should be done with fairness, equity, and bona fide intentions. If the registrar identifies any mala fide intentions aimed at depriving others of their rightful trademark registrations, appropriate actions, including canceling such trademarks, can be taken.

To prevent numerous litigations in the domain of trademarks, it is crucial to exercise due care and attention to comply with trademark mechanisms and file necessary documents promptly and accurately. Timely renewal of trademarks is also essential to avoid their removal from the registrar. By adhering to these practices, businesses can safeguard their intellectual property rights and navigate the trademark landscape with confidence.

FAQs

When can a trademark be removed?

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 into the register.

What is the validity period of the trademark?

All registered trademarks are valid for a period of 10 years from the date of application. At the end of its validity, a trademark can be renewed easily by paying the Government fee for registration.

Can trademark registration in India be renewed after 3 years?

Trademark registration in India must be renewed every 10 years failing which the trademark is liable to be removed from the register of trademarks.

[1] https://indiankanoon.org/doc/1674695/

[2] https://indiankanoon.org/doc/1860556/

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