CRITICAL OVERVIEW OF THE EFFECT OF NON-USE OF TRADEMARKS

Introduction:

A trade mark provides protection to its owner by ensuring that they have the only right to use it or to authorise other parties to do so in exchange for money. Although the duration of protection varies, a trademark can be perpetually renewed by paying additional fees once the allotted time has elapsed. Broadly speaking, trademarks promote initiative and commercial ventures by providing their owners with notoriety and financial advantage. Trade mark protection also prevents dishonest rivals, like counterfeiters, from using similar unique marks to promote subpar or unrelated goods or services. Global trade is promoted by the system, which enables anybody with initiative and talent to manufacture and sell goods and services under the most ethical standards.1

Because its main objective is to uniquely identify the economic source or origin of products or services, a trademark, when appropriately titled, symbolises source or acts as a flag of origin. Put differently, trademarks serve as a means of identifying a certain business as the supplier of products or services. Trademark use is the term used to describe this kind of trademark utilisation. A registered trademark carries particular exclusive rights.2

Rectification of Registers in case of Non-Use:

It should be emphasised that, assuming there are no other trademark objections, trademark rights typically result from the use of, or to preserve exclusive rights over, that sign in relation to specific goods or services. In India, Section 473 of the Trademarks Act specifies two circumstances in which a registered trademark may be cancelled:

"...

  1. If it is proved that the trademark was registered without any bona fide intention of use on part of the owner. More often than not, as part of trademark searches that we conduct, we come across many applications which have been filed in all the 45 classes when the mark is actually used for one or two classes only. This is a defensive registration and the Court has held in various cases that such registrations should not be encouraged.
  2. If the trademark hasn't been used for a continuous period of 5 years from the date of registration of the mark and three monthsprior to filing the application for registration. So, in effect, if the mark has not been used for a period of 5 years and 3 months, then any aggrieved person may file for rectification proceedings."

Thus, in the first category, a petition to have the mark cancelled may be filed if it can be shown that the applicant did not intend to use it; in the second category, an application for rectification may be filed even if there was some initial usage if the mark was not used for a continuous period of five years after the mark's registration.4

Non-Use Cancellation:

Trademark non-use cancellation is the process of removing a registered trademark from the Register of Trade Marks in India and other countries on the grounds that the trademark has not been used in connection with the goods or products listed in the registration application for five years after it was registered and three months before that date. The removal of a trademark from the registration for lack of usage is another term for this circumstance. Section 47 of the Indian Trade Marks Act of 1999 deals only with the removal of any registered trademark from the Register of Trademarks on the basis that the brand has not, during the required period of time, been used in connection with the specified goods or products.5

Effect of Non-Use:

If the registered trademark has not been utilised in good faith, it may be revoked for non-use. Two interesting situations are presented under Section 47 of the Trademarks Act of 1999 with regard to the removal of a registered trademark from the trademark registration. Clause 2 of that same regulation addresses the removal of a trademark following at least five years of inactivity. This period is calculated starting on the registration date and ending three months before the removal application is submitted. The trademark information form TM-1 requires the status of the trademark's utilisation to be specified. As permitted by Section 46 of the Act, many trademarks are registered as "proposed to be used." This information is available to everybody and is generally relied upon by people. As mentioned above, if the mark is not put to use within five years, then it can be removed from the register.6

Rectification Proceeding:

A "person aggrieved" may file an application for the revocation or removal of a registered trademark due to non-use. The defendant in an opposition process may ask for proof of the prior registration's actual usage if it has been published on the Register for more than five years. Requests for changes to the trademark registration or the removal of any registered brand from the register must be sent to the relevant zonal registrar of trade marks or the Intellectual Property Appellate Board (IPAB).7

There is no remedy open to the owner after opposition proceedings are initiated and it is determined, based on the facts and circumstances, that the owner has not used the trademark for the requisite period of time. That being said, nothing stops a trademark owner from registering a trademark even if it hasn't been used lawfully for the required amount of time if no application for rectification is made to have the trademark removed by an unhappy party and the registered proprietor begins using the trademark legitimately after the required five years.8

Footnotes

1 Trademark Non-Use Cancellation, available at http://www.trademarksindia.net/trademark-non-use-cancellation.php, last seen on 05/05/2020 S.47, Indian Trade Marks Act of 1999

2 World Intellectual Property Organisation (1997). Introduction to Intellectual Property: Theory and Practice. Kluwer Law International. p. 23

3 S. 47, The Trade Marks Act, 1999.

4 https://selvams.com/rectification-of-trademark-in-india-on-grounds- of-non-use/, last seen on 05/05/2020.

5 Trademark Non-Use Cancellation, available at http://www.trademarksindia.net/trademark-non-use-cancellation.php, last seen on 05/05/2020 S.47, Indian Trade Marks Act of 1999.

6 Tehemtan N. DARUWALLA, the requirement of genuine use of trademarks for maintaining protection, Report Q218, pages 4-9

7 Rectification Proceedings, available at https://selvams.com/rectification-of-trademark-in-india-on-grounds-of- non-use/, last seen on 09/05/2020.

8 Majumdar and Co., Limits on Effect of Registered Trade Mark, Report A229, National Seminar on Trademark.

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.