Grounds of Trademark Removal in India

Procedure for Trademark Removal of a Registered trademark in India

If a registered trademark in India has not been used for a continuous period of five years from the date on which the trade mark is actually entered in the register, it can be removed on an application by third party for rectification or cancellation made in prescribed manner by filing request before Trade Marks Office in India.

As per Section 47(1) of the Trade Marks Ac, 1999 a registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the registrar or the appellate Board by any person aggrieved on the ground either—-

A.      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 him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be and that there has, in fact been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application or

B.      That up to a date three months before the date of the applications a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark 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.

Clause (3) of the said provision, however, provides for special circumstances under which non-use of the registered mark may be excused. If non-use of a trade mark is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application for removal relates, then the application for removal shall not succeed.

Precautions Against Trademark Removal in India

Precautions to be undertaken in order to prevent the removal of a mark from the register:

·         Renewal of the mark from time to time.

·         Preserving the distinctive character of the mark and avoiding it from becoming deceptive.

·         Not keeping the mark unused for a period exceeding five years from the date of registration of the mark.

Case Law

In a Delhi High Court judgment, Pfizer Products Inc. v. Rajesh Chopra, the plaintiff filed a suit for infringement and passing off action against the defendant wherein, the propriety rights of a drug sold under the name of “Geodon” by the defendant were challenged. The plaintiff had registered the same in India on July 18, 1996. The defendant, on the other hand, claimed proprietorship of ‘Geodon’ and use of the mark since June 01, 2003. One of the major contentions of the defendants was that the plaintiff had failed to show use of the trademark in India since its registration and hence the mark is liable to be struck off from the register so that the defendant could legally market his product under the concerned trademark. The balance of convenience was in favour of the plaintiff as it is a global player, selling the drugs by this name in over 40 countries. Even though the sale of the concerned drugs in India could not be established, the importance of wrongfully using the trademark of such a global product in the field of medicine was established. Hence, the trademark was not removed from the Register.