Trademark confers exclusive rights to the owner of the mark to use the mark and sue if any authorized use of the mark happens. But, what if the registered mark is kept idle, without being used anywhere? Will there be any legal implications of non-use of the mark? Will, the mark be canceled for non–use? What will be the stand of the owner for non-use of the mark?
What Is Non-Use Of Mark?
Non-use of mark implies that the registered trademark has not been in use for the said time period, given in the Act. There is no single proof of mark being used in form of business.
Grounds of removal of the mark
1. If the trademark was registered with malafide intent to use the mark or with no intent to use the mark; 2. If the mark is unused for more than 5years and there is no evidence of the mark being used at all Under these two situations, the registered mark can be called for cancellation and rectification of trademark can be filed against the mark.
Section 47 of the Indian Trademark Act, 1999 exclusively deals with cancellation or removal of trademark if there is no bona fide use of the trademark.
When can it be done
If a trademark is not used for 5 years and 3 months from the date on which it was registered in the trademark registry- non-use cancellation can be filed against the trademark
Who can file?
Any person who is aggrieved by the mark can file for the cancellation of mark on the grounds of non-usage. The term “aggrieved party” is not defined anywhere in the Act. The Courts have relied upon definitions from various judicial pronouncements to define the term. As far as we can define- aggrieved party means and includes those people who have substantial interest in removing or cancelling the mark.
Procedure to file for removal of the mark
There is no mandatory procedure given in the statute for trademark removal under Section 47. Therefore, reliance is placed on Rule 97 which deals with removal and rectification procedures.
Rule 97- Application Stage
An Application in Form TM-O should be filed with the Registrar for the trademark variable along with the statement disclosing the applicant’s interest for such removal.
Rule 98- Counter statement and Evidence Stage
On receiving such application, the registered proprietor shall file a counter statement within 2 months of the receipt of the application from the Registrar that shall consist of the grounds of non-removal. Failure to file counter-statement within 3 months of the date of receipt of an application, then the applicant can file evidence supporting the application for the rectification of the Register.
Rule 99 – Order Stage
Any third party can intervene in the proceedings alleging an interest in the registered trademark and can apply in Form TM- O for the leave to intervene. The Registrar may grant the leave or refuse it after hearing the parties concerned. The order passed by the Registrar is appealable within 90 days to the IPAB (Now High Court) Form: An application under Section 57 is to be made in the Form TM-O
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How to avoid trademark removal
The following precautions can be taken to avoid removal of mark:
- Timely renewal of the mark.
- Active use of the mark without any delay after the registration is done.
- Try to preserve the uniqueness or arbitrariness of the mark.
- Avoiding the mark from being deceptive.