Trademark Registration Cancellation in India

Trademark Registration Cancellation in India

Trademark Registration cancellation

Trademark registration cancellation refers to the legal process of revoking or invalidating a previously granted trademark registration. It is a procedure initiated by an interested party who believes that the trademark registration should not have been granted or that it is liable for cancellation on certain grounds.

The cancellation of a trademark registration essentially removes the legal protection and exclusive rights associated with that trademark. It signifies that the registered trademark is no longer valid and cannot be enforced against others for unauthorized use or infringement.

Trademark registration cancellation is a legal process that typically involves filing an application with the relevant intellectual property authority or tribunal, presenting evidence and arguments supporting the grounds for cancellation, and going through a review and hearing process. The final decision on cancellation is made by the competent authority or, in some cases, may be subject to further appeal.

Indian trademark law allows for the cancellation of a registered trademark after 5 years and 3 months from the date the mark was put into the Trade Marks Register. Section 47 of the Trademark Act, 1999 governs the circumstances in which your trademark may be cancelled.

Grounds for Cancellation of Registered Trademark in India

The grounds for trademark registration cancellation may vary depending on the jurisdiction, but common reasons include:

Non-use:

If the trademark has not been used in commerce for a specified continuous period, typically five years, it may be vulnerable to cancellation. This ensures that trademarks are not monopolized by entities that do not actively use them.

Prior existing rights:

If another party can demonstrate that they have prior existing rights to the trademark, such as prior use or ownership, they may seek cancellation of the registration.

Generic or descriptive nature:

If a registered trademark becomes generic or descriptive over time, it may lose its distinctiveness and be subject to cancellation. Trademarks are meant to be distinctive and not merely descriptive of the goods or services they represent.

Deceptive or misleading marks:

If a trademark is deceptive, misleading, or likely to cause confusion among consumers, it may be subject to cancellation. This is to protect consumers from being misled or confused by deceptive trademarks.

Violation of statutory requirements:

If the trademark registration process was not followed correctly or if there was a violation of statutory requirements during the registration process, the trademark may be cancelled.

Who Can File a Trademark Cancellation Request?

  1. Any individual who is dissatisfied with the registration of trademarks may petition to have it annulled. A person who is harmed by a trademark is said to be offended.
  2. A person who is interested in a trademark may file a cancellation request. Although anybody can apply for it, he can only do so for the reasons specified in the Act.
  3. The Registrar of Trademarks may also revoke it on his own initiative if the trademark pertaining to any products or services is no longer registered, i.e. when it is not renewed after ten years of registration.
  4. Section 58 of the Act allows the registered proprietor to request that the trademark be removed from the register.

To whom should the applicant File a Cancellation Form?

The Registrar of Trademarks or the Appellate Board receives the cancellation application. The Registrar of Trademarks is responsible for submitting the cancellation application and has jurisdiction over trademark registrations. The Appellate Board (“Intellectual Property Appellate Board”) for Indian trademarks is the Intellectual Property Appellate Board.
The Boards are located in five different cities across India: Chennai, Delhi, Mumbai, Kolkata, and Ahmedabad. Either the Registrar or the Appellate Board receives requests for cancellation.

Cancellation Forms

The 2017 Trademarks Rules provide documents that must be submitted to the Registrar for cancellation. These cancellation submission forms are sent with the application to the Registrar. There are two types:

Form TM-O:

This form is used to request the cancellation of a trademark for the reasons outlined in Sections 47 and 57.

Form TM-U:

This is the application form for requests to withdraw a trademark’s registration for the reasons outlined in Section 50.

Procedure for Cancellation of Registered Trademark in India

The following are the procedure for the cancellation of a Registered Trademark in India:
  1. The involved parties, i.e., the trademark owner(s) and the registered user, shall get a notification when either the Registrar or the Appellate Board requests the cancellation (s). Before the Registrar, the concerned parties submit counter statements in opposition to the application. Both sides are given a chance to present their arguments. Both sides present their evidence, and their claims are heard.
  2. The Registrar listens to all sides before making a decision based on the facts presented by the parties. When the Registrar issues an order of cancellation based on a submission, he implements it by deleting the trademark from his register. The Appellate Board will hear appeals to the Registrar’s decision. The Appellate Board follows the same process as Civil courts if the application is brought directly before it.
  3. The method used in civil court is comparable to that used by the Registrar of Trademarks. The Registrar is informed to cancel the trademark if the Appellate Board rules in favour of cancellation. The Appellate Board’s decision may be challenged in a writ petition to the High Court.

Steps for Trademark Cancellation

Here are the general steps involved in the trademark cancellation process in India:

Grounds for cancellation:

Determine the grounds on which you seek to cancel the trademark registration. Common grounds include non-use of the trademark for a continuous period of five years, prior existing rights, absence of distinctiveness, deceptive or misleading marks, etc. Ensure that you have valid reasons and evidence to support your claim.

Jurisdiction:

Identify the appropriate forum for filing the cancellation. The IPAB has exclusive jurisdiction over cancellation actions, but if the grounds for cancellation are based on non-use, you can file a rectification application directly with the Registrar of Trademarks.

Drafting the cancellation application:

Prepare a cancellation application or rectification application, as applicable, outlining the grounds for cancellation and providing supporting evidence. It is advisable to seek professional legal assistance to ensure that the application is properly drafted.

Filing the application:

Submit the cancellation application or rectification application, along with the prescribed fees, to the appropriate authority. Ensure that all necessary documents and evidence are attached as per the requirements specified by the respective authority.

Examination and hearing:

Once the application is filed, the authority will examine the application and serve a copy of the application to the trademark owner. The trademark owner will have an opportunity to respond to the application and present counter-arguments. The authority may schedule a hearing to allow both parties to present their case.

Decision:

After considering the arguments and evidence presented by both parties, the authority will render a decision on whether to cancel the trademark registration or maintain it. The decision will be communicated to the parties involved.

Appeal:

If either party is dissatisfied with the decision, they have the option to appeal the decision before the appropriate appellate authority, which is typically the High Court.


Created & Posted by Sony Garg

Accountant at TAXAJ


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