The Trademark legislation provides a platform for firms, individuals, and others to register their labels, logos, and symbols in order to prevent others from using them. Nevertheless, while the registration protects the trademarks, they may be cancelled for a variety of reasons. The concept of trademark revocation can be understood as method of having an existing registered trademark deleted in a part or in whole. One of the reasons for revocation is “non-use of trademark.” Notably, the trademark can be cancelled or revoked if it is not in use for more than 5 year 3 month continuously from the date of registration.
The Trademark legislation provides a platform for firms, individuals, and others to register their labels, logos, and symbols in order to prevent others from using them. Nevertheless, while the registration protects the trademarks, they may be cancelled for a variety of reasons. The concept of trademark revocation can be understood as method of having an existing registered trademark deleted in a part or in whole. One of the reasons for revocation is “non-use of trademark.” Notably, the trademark can be cancelled or revoked if it is not in use for more than 5 year 3 month continuously from the date of registration.
What are the provisions In Indian legislation for Use and Non-Use of Trademark?
Trademark Act, 1999 (hereinafter referred as Act) is the relevant legislation that deals with the protection of trademark in India. Following are the provisions that deal with the use and non-use of trademark in India:
Definition of Trademark: “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.
Section 47 of the Act deals with the provisions related to the grounds on which registrar or appellate authority can revoke the registered trademark for non use. The provision states that if someone has acquired the certificate of registration without any bonafied intention on the part of applicant or the trademark is not in use from the last 3 three months of filing the application and continuous five year from the date of registration of trademark. It is relevant to mention here that the use is not specified for merely sale purpose, use of advertisement is also considered as use and a single use in the whole time period is sufficient for proving that the trademark is in use.
What is the process of revocation for the non-use trademark?
Application: The aggrieved person needs to submit an application in the TM-O form with all the details regarding interest, facts and reliefs. In simple terms it can be concluded that the person who wants that the said trademark should be cancelled for non use will make an application to the appropriate authority with all the necessary details.
Counterstatement: After receiving the application, the owner of the registered trademark can submit their statement with the reasons of not cancelling the trademark within three months of receiving the application. If no such statement is filed within the specified time, the applicant can present the evidences which are permissible by the authority or in the form of affidavit.
Evidence: After submission of evidence in favour of application submitted by the applicant, the proprietor or owner of registered trademark can submit their evidence within two months from the date of receipt of evidence. It is pertinent to mention here that the submitted documents must be written in the English or Hindi language and if not so, the parties need to submit the true translated copy of that document in either language i.e. English of Hindi. Moreover, after submission of evidence by the owner of registered trademark, one month timing should be granted to the applicant for further submissions.
Hearing: After submission of evidence by both the parties the registrar will issue a notice for hearing specifying the date for hearing which should not be less than 1 month from the date of issue of notice.
Surbhi Singla
Associate at Lawgenix Legal Geniuses, S.A.S Nagar, Mohali