In India, a trademark can be removed under two scenarios.
1.If the trademark is not used for the period of 5 years from the actual date of its registration or not used for 3 months preceding to the time of application registration, in reference to the product or products laid out.
2.If the trademark is registered without any intention of actually using the mark.
Any aggrieved person can file a petition in a prescribed manner seeking rectification or cancellation of the mark before the Trademark Registry Office or Intellectual Property Appellate Board (IPAB). In this article, you will learn about the rectification/cancellation of a registered trademark in India.
What is the cancellation of a trademark?
Cancellation of a registered trademark is a legal procedure in which an aggrieved person or party seeks to remove a registered trademark from the registry. There are certain conditions for Trademark. Section 47 of the Trademark Act deals with rules of removing trademark.
Two key reasons for cancellation of a trademark:
If the owner of the trademark registered the mark of identity without the bona fide intention to use it.
If the trademark is not used for 3 months prior to the date of application of registration or if the trademark is not continuously used for 5 years from the n exact date of registration.
Grounds of Trademark Cancellation:
An aggrieved person can request for trademark cancellation either within 5 years of trademark registration or after 5 years of registration.
Trademark cancellation within 5 years:
Is deceiving the public
Creates confusion within Business
Is too descriptive in nature
Just a geographically descriptive
Is not defended for at least 3 years
Trademark cancellation after 5 years if:
The mark has become too generic (Commonly used)
It is registered with fraudulent means
The trademark contains obscene things
It is disparaging
What is the rectification of a trademark?
Rectification is a legal process to make a correction or rectify an error that has been made while registration.
List of reasons for rectification of Trademark:
Not adhering to the condition entered in the Register.
The entered trademark was wrongly registered, which caused a lot of confusion among the other trademark.
Error defect in any entry made in Registry.
If the renewal fees are not paid.
How rectification affects the Trademark?
After hearing the plea by giving equal opportunity to the concerned parties, they may remove, cancel, or rectify the trademark entry in the registry.
Who can file the rectification/cancellation of Trademark?
Any person (aggrieved person) who got affected/damaged by the registration or someone who has a pending trademark for the same mark.
Or, any person who is interested in getting the mark removed from the register to fend off the damage if the mark is determined.
It cannot be filed anonymously, the onus of proving the identity remains on the owner.
What is contained within the petition for rectification/cancellation?
The details of the parties factual background information for cancellation, where one can file a cancellation petition?
The petition is often filed at the trademark office where trademark originally registered.
Is the registrar order appealable?
Yes, the decision of the Registrar of TradeMarks is appealable before the IPAB. The Trade Marks Act does not provide for any appeal against the order of IPAB. However, a writ petition is maintainable before the jurisdictional High Court. It is heard by the Division Bench of the Court, but in Delhi High Court, it is addressed by Single Judge Bench.