CANCELLATION OF TRADEMARK REGISTRATION IN INDIA
What is a Trademark?
A trademark can be thought of as a name, phrase, logo, or even sound that uniquely identifies your brand and distinguishes it from your competitor’s. A trademark can be for both product and/or service.
Once a trademark is registered, no third party can use the registered trademark for their products or services unless the original party that registered the trademark grants permission for any such use.
What is Trademark Registration?
Trademark registration in India is governed by the Trade Marks Act, of 1999 and the Trade Marks Rules, of 2017. The process of registering a trademark in India involves filing an application with the Indian Trade Marks Registry and then undergoing a review process to ensure that the mark meets the necessary legal requirements.
The process can take several months to complete. Once registered, a trademark is valid for 10 years and can be renewed indefinitely in 10-year increments. It is advisable to conduct a trademark search before filing an application to ensure that the mark is available for use and registration.
What are the different kinds of Trademark that can be registered in India?
In India, there are several different types of trademarks that can be registered. These include:
- Standard character marks: These are trademarks that consist of words or letters, numbers, or a combination of these. They do not include any design elements or logos.
- Device marks: These are trademarks that include a design element or logo, in addition to words or letters.
- Collective marks: These are trademarks that are used by a group of people, such as members of a trade association or co-operative.
- Service marks: These are trademarks that are used to distinguish services, rather than goods.
- Certification marks: These are trademarks that are used to certify that certain standards have been met, such as quality or origin.
- Sound marks: These are trademarks that are in the form of sound, and can be registered under Class 41 of the Trade Marks Act 1999, if it capable of being represented graphically and capable of distinguishing the goods or services of one undertaking from those of other undertakings.
It’s important to note that for a mark to be registered as a trademark in India, it must be distinctive, meaning it should not be similar to any existing trademarks and should not be generic terms or descriptive of the goods or services for which it is being used.
Cancellation by the registered proprietor:
A registered proprietor of a trademark in India may choose to cancel their registration for various reasons. The Trade Marks Act, of 1999 allows for the cancellation of registration by the registered proprietor in certain circumstances.
One of the common reasons for cancellation by the registered proprietor is that the trademark has not been used for a continuous period of five years or more. Under such circumstances, the registered proprietor may file for cancellation of the registration on the ground of non-use.
Another reason for cancellation by the registered proprietor is that the trademark has become the common name or surname in the trade.
A registered proprietor may also choose to cancel the registration of a trademark if they no longer wish to use it, or if they wish to transfer the registration to another party.
It’s important to note that the cancellation of a trademark registration by the registered proprietor does not affect any rights that may have been acquired by third parties in respect of the use of the mark prior to the cancellation
Grounds for filing a cancellation petition:
There are several grounds on which a cancellation petition can be filed for a registered trademark in India. Some of the most common grounds include:
- Non-use: If a registered trademark has not been used for a continuous period of five years or more, a cancellation petition can be filed on the ground of non-use.
- Misrepresentation or fraud: If the trademark was obtained by misrepresentation or fraud, a cancellation petition can be filed.
- Lack of distinctiveness: If the trademark is not distinctive and is similar or identical to an existing trademark, a cancellation petition can be filed on the ground of lack of distinctiveness.
- Prohibited marks: If the trademark contains a word or symbol that is prohibited by law, such as an official emblem or national flag, a cancellation petition can be filed.
- Change of ownership: If the ownership of the trademark has been transferred without proper documentation, a cancellation petition can be filed.
- Generic marks: If the trademark is a generic term or descriptive of the goods or services for which it is being used, a cancellation petition can be filed on the ground that it lacks distinctiveness.
- Passing off: If the use of the trademark is causing confusion or deception among consumers, a cancellation petition can be filed on the ground of passing off.
It’s important to note that the party filing the cancellation petition has the burden of proving the grounds for the cancellation
Process of Cancellation of Trademark:
The process of cancellation of trademark registration in India can be summarized as follows:
- Filing of Cancellation Petition: A person seeking to cancel a trademark registration must file a petition to the Registrar of Trademarks for cancellation of the registration. The petition must state the grounds for cancellation, which can be any of the grounds mentioned in the Trade Marks Act, 1999, and the Trade Marks Rules, 2017.
- Review of Cancellation Petition: The registrar will then review the petition and may ask the registered proprietor to file a counter-statement.
- Hearing: After the registrar has reviewed the petition and counter-statement, a hearing will be conducted to determine whether the grounds for cancellation are valid.
- Decision: After the hearing, the registrar will make a decision on whether to cancel the registration or refuse the petition.
- Appeal: If the registrar decides to cancel the registration, it will be removed from the register of trademarks and the registered proprietor will no longer have any rights to the trademark. If the registrar refuses the petition, the person who filed the petition can file an appeal to the Intellectual Property Appellate Board (IPAB).
- Enforcement of Cancellation: Once the registration is canceled, it will be removed from the register of trademarks and the registered proprietor will no longer have any rights to the trademark. It’s important to note that the cancellation of a trademark registration does not affect any rights that may have been acquired by third parties in respect of the use of the mark prior to the cancellation.