Trademark Cancellation or Rectification refers to the process with respect to removal or revocation of a registered trademark from the Register of Trademarks.
Basic Requirements of Filing a Cancellation
An aggrieved person can apply for trademark rectification/cancellation on the grounds of non-use or wrongly remaining on the Register. An application for cancellation/rectification of a registered trademark can be filed before the Trade Marks Registry or the Intellectual Property Appellate Board in the prescribed manner and with the requisite fee. There is no statutory deadline for filing the rectification/cancellation application.
Grounds for Cancellation
Section 47 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 -
- 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
- 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.
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 -
- There is a contravention, or failure to observe a condition entered on the register in relation to the registration of the trademark.
- The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered trademark.
- 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.
- There is an error or defect in any entry made in the Register.
- 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.
- Under Section 31(1) of the Act, the original registration of the trademark shall be prima facie evidence of the validity of the trademark in all legal proceedings relating to a trade mark (including in an application under Section 57).
- Although the Registrar of Trademarks is empowered to hear rectification/cancellation applications against registered trademarks, in cases where an infringement suit is pending before a civil court and where the plaintiff/defendant in the suit is contesting the validity of the registered trademark, the power to hear applications for cancellation/rectification of such trademarks vests with Intellectual Property Appellate Board.
Preventing Trademark Cancellation
A registered proprietor, in order to prevent rectification or cancellation of a trademark, shall:
- Renew their mark from time to time.
- Preserve the distinctive character of the trademark and avoid it from becoming descriptive.
- Not keep the mark unused for a period exceeding five years and three months from the date of registration of the trademark.
Trade Mark Rules, 2017 providing the rules and procedure for trademark cancellation can be accessed here.
This article can be accessed here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.