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.
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.
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 –
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 –
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.
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.
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.
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.
Trademark registration in India must be renewed every 10 years failing which the trademark is liable to be removed from the register of trademarks. A request for renewal can be filed anytime within one year prior to the date of expiry and there is a grace period of one year after the date of expiry, subject to the discretion of the Registrar upon showing sufficient cause for non-filing of the renewal request within the timeline.
[1]147 (2007) DLT 300
[2] 2002 (24) PTC 654 Reg
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