Cancellation Of A Registered Trademark In India: A Complete Guide

A trademark is governed by the Trademark act 1999. Though Registration of a trademark is not mandatory, it is advisable to get it registered as it provides a safety shield and bundle of exclusive rights to the trademark owner. Trademarks once registered may get canceled if the grounds provided under this act gets satisfied. In this blog, we will get a complete guide on trademark cancellation and its procedure.

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Who can file for Trademark Cancellation?

A trademark cancellation petition is filed when a trademark has been wrongly registered or when it has not been used for a long time. The application can be filed with the Registrar of Trademarks or the Intellectual Property Appellate Board (IPAB), depending on the cancellation. The IPAB has offices in Chennai, Delhi, Mumbai, Kolkata and Ahmedabad, and the petition has to be filed in the Trademark Registry, where the mark is registered.

Procedure for Cancellation of the registered Trademark

The process for cancellation of a registered trademark may vary depending on the jurisdiction and applicable laws, but the following steps are generally applicable:

1. Determine the basis for cancellation: A registered trademark can be canceled on various grounds, such as non-use, abandonment, fraud, or genericness. It is crucial to determine the basis for cancellation before initiating the process.
2. Gather evidence: Depending on the basis for cancellation, evidence may need to be gathered to support the claim. For example, if the basis for cancellation is non-use, evidence of non-use may need to be gathered.
3. File a petition or application: A petition or application for cancellation of the registered trademark must be filed with the appropriate authority or court. This may involve paying a fee.
4. Serve notice: The trademark owner must be notified of the cancellation proceedings and given an opportunity to respond. This may involve serving a notice of cancellation on the owner or publishing a notice in a relevant publication.
5. Respond to counterclaims: If the trademark owner files a counterclaim, the party seeking cancellation must respond within the applicable timeframe.
6. Attend hearing or trial: If the matter proceeds to a hearing or trial, the parties may need to attend and present evidence in support of their respective positions.
7. Await decision: The authority or court will ultimately issue a decision on whether to cancel the trademark. If the trademark is canceled, it will be removed from the register and will no longer be protected.

Documents Required for Cancellation of Trademark 

To cancel a registered trademark under the Indian Trademarks Act, 1999, the following documents are required:

1. Application for Cancellation: An application for cancellation of the registered trademark should be filed before the Intellectual Property Appellate Board (IPAB). The application should contain the name, address, and other relevant details of the applicant, along with the grounds for cancellation of the trademark.
2. Evidence: Evidence in support of the grounds for cancellation should be provided along with the application. This can include documents, affidavits, and any other evidence that supports the cancellation of the trademark.
3. Power of Attorney: A power of attorney in favor of the attorney representing the applicant should be submitted along with the application for cancellation.
4. Proof of Payment: The prescribed fee for filing the application should be paid and the proof of payment should be submitted along with the application.
5. Trademark Registration Certificate: A copy of the trademark registration certificate should be submitted along with the application for cancellation.

Trademark registration cancellation fees

Trademark cancellation fees in India are as follows:

1. For physical filing – ₹5000/-
2. For E-filing – ₹4500/-

Grounds for Cancellation of Trademark registration

The grounds for cancellation of a trademark as per the Trademarks Act, 1999 in India are as follows:

1. Non-use: A trademark may be cancelled if it has not been used continuously for a period of five years or more.
2. Abandonment: If the trademark owner has abandoned the use of the trademark or has allowed it to become generic, the trademark may be cancelled.
3. Invalidity: If the trademark was registered in violation of any provision of the Trademarks Act, such as being deceptive or similar to an existing trademark, it may be cancelled.
4. Fraud or misrepresentation: If the trademark was registered by fraudulent means or with a false claim of ownership, it may be cancelled.
5. Public interest: If the trademark is contrary to the public interest, such as being scandalous or obscene, it may be cancelled.
6. Generic: If the trademark has become generic, meaning that it has become the common name for a particular product or service, it may be cancelled.
7. Similarity to a well-known mark: If the trademark is identical or similar to a well-known trademark and is likely to cause confusion or deception, it may be cancelled.

Forms of Cancellation

In India, Trademark Cancellation is processed using specific forms prescribed by the Trade Marks Rules, 2017. The key forms used for cancellation are:

• Form TM-U - Used for requesting the removal of a registered trademark due to non-usage or any other reason under Section 47 of the Trademarks Act 1999.
• Form TM-O - Applying for a rectification or cancellation of a trademark under Section 57 (Correction of the register) or Section 50 (Removal of registered collective or certification mark).
• Form TM-P - Used for miscellaneous trademark proceedings only for amendment, extension or a change of procedure in relation to the cases of cancellation.

Each form has to be filed before the concerned Trademark Registry or Intellectual Property Appellate Board (IPAB), as the case may be, based on the grounds of cancellation.

Conclusion

In conclusion, cancellation of a registered trademark in India is a legal process that allows any person aggrieved by a registered trademark to apply for its cancellation on specific grounds. While cancellation is not a desirable outcome for trademark owners, it is essential to ensure that the trademark register is updated with only valid trademarks. The cancellation process can be complex, and it is crucial to seek professional legal assistance to ensure that the procedure is followed correctly. Cancellation is one of the many aspects of trademark law that underscores the importance of trademark registration and compliance with the Trademark Act, 1999, to maintain the exclusive rights to use and protect a trademark.