Indian trademark law provides for the cancellation registered trademark if, for a constant period of 5 years and 3 months from the date on which the mark was entered into the Trade Marks Register. The scenarios under which your trademark can be canceled will originate under Section 47 of the Trademark Act, 1999. In this article, we will inform you how a Non-used trademark gets canceled.
Introduction to Cancellation of a trademark
- Introduction to Cancellation of a trademark
- Cases of Trademark Cancellation
- Who can file for cancellation proceedings?
- Steps to avoid Trademark Cancellation
- Documents required for Cancellation of a trademark
- How much does a trademark cancellation cost?
- Basic information required while applying for Trademark Cancellation:
- Reasons to Consider Using Trademark Cancellation
- Trademark Cancellation Grounds
- Cancellation Within 5 Years
- Cancellation after 5 Years
- Outcomes of Trademark Cancellation
- Another reason for filling trademark cancellation or rectification
- Trademark Non-use Cancellation
- Important points in trademark cancellation
- Frequently Asked Question
A trademark cancellation is a legal procedure before the Trademark Trial and Appeal Board (TTAB) for removal of the registered trademark from the registry. There are certain provisions for Trademark. Section 47 of the Trademark Act deals with rules of eliminating trademark.
A registered trademark is directed to cancellation under specific conditions.
- If it is confirmed that the trademark was registered without any bona fide purpose of use by the owner
- If the trademark hasn’t been practiced for a constant period of five (5) years from the date of registration of the mark.
Trademark cancellation is necessary because it preserves the property of business owners. It also protects their capacity to compete in the free market. An application for a mark can be rejected if there is an alike mark already registered. If the candidate believes they have the right to the trademark, they may file an appeal for the cancellation to protect their possible right to the mark.
Cases of Trademark Cancellation
- Starbucks: The intellectual property rights of the famous Starbucks Corporation, which runs on an international level, have been infringed by a Palestinian company operating under the name of “Stars and Bucks” in both Ramallah and Nablus.
- PayPal: PayPal has accused PayTM of copying its logo to grow its own user base. The US-based e-wallet, a pioneer in digital transactions, claims that PayTM had no other reason to use the same two-tone color scheme in its trademark infringement complaint with the Indian Trademark Office. And though the colors of a logo may not mean anything to the common observer, smaller matters have been at the center of trademark infringement cases in the past. And, as we shall see, with very good reason.
- Eclairs: Cadbury is very particular about intellectual property. In some jurisdictions, it even owns the right to the use of a shade of purple on chocolate wrappers. In India, it had registered three trademarks containing the word Eclairs (Chocolate Eclairs, Orange Flavoured Chocolate Eclairs, and Chocolate Eclairs Pop). All three names were, however, not in use despite being registered way back in 1972. I won the case in 2015, after being in court over the matter for more than a decade.
Who can file for cancellation proceedings?
- Any person (aggrieved person) who got affected/damaged by the registration or someone who has a pending trademark for the same mark.
- Or, any person who is interested in getting the mark removed from the register to fend off the damage if the mark is determined.
- It cannot be filed anonymously, the onus of proving the identity remains on the owner.
Steps to avoid Trademark Cancellation
There are a few ways to minimize the likelihood of having a trademark canceled.
- Choose the Right trademark from start: The most usual reason to cancel a trademark is linked to the first selection of trademark. The similar trademarks will confuse the consumers and create problems if the trademark registers. Get a trademark search done by the trademark lawyer before using a trademark.
- File trademark renewal & declaration of use: Even the trademark rights can go on endlessly, there are still maintenance documents that must be filed.
- Keep control over the trademark: A trademark owner must check the trademark. And if it does not work on it trademark rights can be lost. Hence, if subsidiaries or associate companies will use a trademark there must be a written license agreement in place.
- Be Particular while using the trademark: When registering for a trademark or filing a declaration of use, it’s important to be precise when listing the products or services the trademark is being applied for. Saying that it’s being applied on all of a company’s products when it’s only being used on particular items, for instance, may be grounds for cancellation.
- Keep trademark in use: If it’s confirmed that you haven’t used or maintained your trademark for a vital period, someone may cancel your trademark claiming abandonment. 3 years of non-use is deemed presumptive abandonment.
- Fight Upon Genericization: Many companies have been removed from their exclusive trademark rights because they allowed their trademark to become genericized. Once the public sees a trademark as a descriptor rather than branding, it could come into the public domain and be used by anyone.
Documents required for Cancellation of a trademark
The documents needed for filing a rectification/ cancellation are as follows:
- An application is to be created in triplicate on the requisite form
- A statement of the case, setting out the nature of the Applicant’s interest, facts upon which the case is based and the relief that is sought.
How much does a trademark cancellation cost?
There is a fee for schedule for TTAB trademark oppositions and cancellations which differ from state to state in India. You will see that our attorney’s fees become variable during the discovery phase. As the amount of discovery to request and review will be uncertain. Some forms of discovery, such as depositions, need great preparation which points to large attorney’s fees. Keep in mind that attorney’s fees can vary broadly during the discovery phase, motion practice and trial phase.
TTAB procedures are typically less expensive than trademark litigation in federal court for some reasons:
- There are no court hearings, so your attorney does not have to make any personal appearances. All filings are done in writing and submitted online.
- Discovery depositions are less frequent in TTAB proceedings than in federal court lawsuits.
- There is generally less at stake in a trademark cancellation, which deals only with the issue of registration, than a federal lawsuit which often deals with trademark infringement and corresponding money damages and injunctions.
- All over, the speed of an average TTAB proceeding is slower than a normal federal court lawsuit. While extensions of time are familiar in both venues, the TTAB is famous for taking a long time to fix even minor issues.
Basic information required while applying for Trademark Cancellation:
|Who can file the appeal for trademark cancellation?||Any person whose trading interest harmed by the registration of the trademark including dilution by tarnishment.|
|What is included in the appeal for cancellation?||
|Where can I file a cancellation appeal for a trademark?||The appeal can be filed at the trademark office where the trademark actually registered.|
|Is the registrar order appealable?||Yes, the appeal can be filed before the Intellectual Property Appellate Board within 3 months from the date when the order is communicated.|
Reasons to Consider Using Trademark Cancellation
You must consider trademark cancellation if you think that you will be damaged by the mark’s existence. This can be because:
- Your marks or business will be declined by the mark’s existence
- The presence of the mark conflicts with your ability to honestly compete
- The mark will harm your business’s reputation or operations
If you require to file for a trademark cancellation, you have two filing choices. Many trademark cancellations appeals are filed with TTAB i.e. Trademark Trial and Appeal Board. They will also hear your case. It is also feasible for a federal court to cancel a trademark. This normally occurs during litigation of a separate court case.
Trademark Cancellation Grounds
The first step in canceling a trademark is to file an appeal for cancellation. In your appeal for cancellation, you will need to must proves to cancel the trademark. You will also require to pay the registration fee. It can be done either offline or online.
Second, you must demonstrate there are reasons for the trademark to be canceled. You can ask a trademark cancellation 5 years after it was first registered. A cancellation may also be requested within 5 years of re-publication if you reach certain conditions.
Cancellation Within 5 Years
Cancellation after 5 Years
Finally, the Federal Trade Commission can apply to have a trademark canceled if it:
- Becomes general
- The registrant produces or sells goods and services
- The registrant denies approving goods and services
Outcomes of Trademark Cancellation
At the end of your hearings, there will be one of five results:
- If you are challenging a pending registration, it may be rejected
- The mark may be canceled completely or its use may be restricted in case cancellation is allowed
- The mark’s registration may be denied, or any number of different marks if the case for interference
- Registration of the mark may be assigned to its rightful owner
- Dual ownership of the mark may be given. However, there will be limitations and restrictions to stop dilution and brand confusion
Understand that no financial damages or fee compensation will be given during these hearings. The only thing that will be judged is ownership of the trademark in question.
Another reason for filling trademark cancellation or rectification
i) That the registration was done without proper cause or registration was received by misrepresentation of facts, same as earlier mark registered.
ii) That the mark was wrongly remaining on the register in case it is against some legal provisions of the Act or likely to cause confusion.
iii) Doing any modifications, amendments, or corrections in contact with any registered trademark as per the current progress.
iv) Non-use of any registered trademark for more than 5 years by the registered owner.
v) Not renewing the original or previous registration of a trademark.
vi) A trademark can be canceled from the register in case registration is received by fraud. Especially, where the registration has been received by suppression of material fact or false statement it is known as registration received by fraud.
vii) Inclusion or addition of certain more classes or goods or services, in case it is against the business extent of the registered trademark.
viii) Non-conformity with one or more grounds specified in Section 9 and Section 11 of the Indian Trade Marks Act of 1999.
Trademark Non-use Cancellation
The elimination of any registered trademark from the Register of Trade Marks, based on the non-use of the trademark during 5 years after its registration & 3 months before the date of filing the registration application, about the goods or products defined in the registration application, is termed as the trademark non-use cancellation in India also in countries abroad. Such a case may also be named as the removal of a trademark from the register based on non-usage.
Section 47 of the Indian Trade Marks Act of 1999 deals only with the cancellation or elimination of any registered trademark from the Register of Trade Marks only based on the ground of non-usage of the trademark in connection with the defined goods or products, for the given time limit. Promptly, any registered trademark is unsafe to such cancellation or removal, if it is subject to any of the following 2 conditions or situations:
- If a trademark has not been used in commerce of all those classes of goods or products which have been defined in the registration application, after or before its registration.
- If the registered trademark has not been in commercial use regarding any of the classes of goods or products named in the registration application, during 5 years after its registration or 3 months before the date of filing the application
Important points in trademark cancellation
- A registered trademark is applicable for 10 years from the date of application. It can be renewed every 10 years. There are chances for cancellation anytime during its validity.
- A registered trademark is open for cancellation on the application of a person aggrieved if the mark has not been put to commercial use for a period of five years from the date of registration. The necessary point is that it is after the registration date. This is not automatic but only on an appeal being filed for cancellation.
- A registered trademark is open for cancellation on the application of a person aggrieved if the mark is wrongly registered or wrongly remaining of the trademark register. The person aggrieved is required to show that the mark was registered in contravention of the Trade Mark Act or any other law. Further, the applicant can show that a mark though validly registered has for the change in circumstances become bad and liable to be rectified or canceled.
- A person aggrieved has the option of filing for a cancellation petition before the Registrar of Trade Mark or before the Intellectual Property Appellate Board.
- However, when a civil suit is pending, and a person desires to seek the cancellation of a registration, such a petition can be filed only before the Intellectual Property Appellate Board. Moreover, as held in the case of Toyota by the Supreme Court, such an appeal can be filed only after seeking leave of the civil court. The earlier law that a person has an inherent right to seek cancellation has been done away with. Therefore, the civil suit has to be prima facie satisfied that a registered trademark is vulnerable for cancellation.
- The proceedings asking rectification or cancellation of a registered trademark are an initial proceeding. Therefore, parties are expected to file evidence by way of affidavit. The deponent of the evidence can be subjected to cross-examination. However, in practice, the evidence affidavit is considered to be true unless some glaring inconsistency or factor is shown which could cast doubt on the documents or statements made therein.
- The decision of the Registrar of Trade Marks is appealable before the IPAB. The Trade Marks Act does not provide for any appeal against the order of IPAB. However, a writ an appeal is maintainable before the jurisdictional High Court. Whereas in Chennai, Mumbai, and Kolkatta such a writ is to listen by a Division Bench, in Delhi High Court like a writ is listen by a Single Judge.
Apply for trademark application when you find all the points mentioned above. It is better to do trademark search before applying for trademark registration in India. Before applying for trademark registration do refer to your layers and then apply.
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Frequently Asked Question
What is Trademark Cancellation?
Trademark cancellation is a simple process where a trademark owner can appeal for trademark cancellation because the third party is copying your marks like logo, music, symbol, etc. Or practicing your mark without permission.
Any person aggrieved by the lack or exclusion from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any mistake or error in any entry in the register, may file for rectification/ cancellation proceedings. An ‘aggrieved person’ means any party whose trading interests are affected by the presence of the registration on the register.
An application can be filed in the designated manner before the Trademarks Registry where the application for its registration was filed or at the Appellate Board.
For doing trademark cancellation you can contact our expert they will help you in the trademark process, you can call us at 8750008585 or mail us at [email protected].
The documents required for filing a cancellation are as follows:
Statement of case, setting out the nature of the Applicant’s interest, facts upon which the case is based and the relief that is sought
If you are on the getting end of an appeal to cancel, here is a helpful post on protecting against a TTAB trademark cancellation.
Yes, the Indian Trademark Act provides for rectification/cancellation proceedings.
The mark was not unique at the time of its registration.
The mark disputes with an already existing mark.
The use of the mark is likely to cause confusion and fraud amongst trade and public.
There is no bona fide plan to use the mark.
There has been no use of the mark for a period of 5 years
Cancellation applications can only be filed at the Trademark Registry Ahmedabad, Chennai, Delhi, Kolkata or Mumbai where the trademark was first filed for attaining its registration.