Understanding Trademark Removal in India: Grounds and Consequences

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.

Sections 47 and 57 of the Trademarks Act, 1999 (hereinafter referred to as “the Act”) provide for the cancellation or removal of a trademark from the Registrar of Trademarks. 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 removal of a trademark, including:

A. Section 47 of the Act– A registered trademark may be taken off the register for the goods or services in respect of which it is registered on the grounds that –

1. the trade mark was registered without any bona fide intentions on the part of the Applicant for registration that it should be used in relation to those goods or service by them and that there has been no bona fide use of the trademark in relation to those goods or services for the time being up to a date three months before the date of the cancellation/rectification application or;
2. that up to a date three months before the date of the cancellation/rectification application, a continuous period of five years from the date on which the trademark is actually entered in the register or longer had elapsed during which the trademark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being.
3. 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. Section 57 of the Act– A registered trademark may be taken off the register in respect of the goods or services in respect of which it is registered on the grounds that –

1. There is a contravention, or failure to observe a condition entered on the register in relation to the registration of the trademark
2. The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered trademark.
3. The entry made in the Register was made without any sufficient cause i.e. registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered trademark.
4. There is an error or defect in any entry made in the Register.
5. The trademark was wrongly remaining on the Register i.e. it is contrary to some of the provisions of the Act or is likely to cause confusion amongst the public and trade e.g. the trademark is in contravention of Sections 9 and 11 of the Act.

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.

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 cancelling 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

[1]147 (2007) DLT 300

[2] 2002 (24) PTC 654 Reg

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