Cancellation Of A Registered Trademark In India | Read now

In India, the foundation of trademark law was laid in 1938, drawing inspiration from the British Trade Mark Act of the same year. This initial legislation paved the way for India’s first Trade Mark Act in 1940. Following independence, the legal framework evolved, leading to the enactment of the Trade & Merchandise Mark Act in 1958. Presently, trademark regulations in India are governed by the Trade Marks Act of 1999. Let’s learn about the cancellation of a registered trademark on this blog.

Under the Trade Marks Act, 1999, trademarks are typically registered for a period of 10 years from the date of registration. Subsequently, registration can be renewed every 10 years upon payment of renewal fees and following the prescribed application process. However, it’s crucial to note that Cancellation of a Registered Trademark does not confer indefinite validity.

Occasionally, trademarks may be registered erroneously or may remain on the register incorrectly due to various post-registration events or lack of use over time. To address such situations, the Trade Marks Act, 1999 provides mechanisms for cancellation and rectification of trademarks. 

Cancellation of a Registered Trademark applications can be filed or the Intellectual Property Appellate Board (IPAB), offering recourse in cases where trademarks need to be removed from the register due to certain circumstances.

Who Can File a Cancellation Petition?

According to Section 57 of the Trade Marks Act of 1999, any aggrieved party has the right to submit a cancellation request to the Intellectual Property Appellate Board (IPAB) with the aim of revoking or altering a trademark’s registration. This provision empowers individuals or entities who believe that a registered trademark should be canceled due to various reasons such as non-use, lack of distinctiveness, or deceptive registration.

Cancellation of a Registered Trademark Proprietor

  • In certain scenarios, the owner of a trademark may choose to voluntarily terminate the registration of their trademark in India. This voluntary cancellation typically occurs as a result of agreements made between the trademark owner and third parties or due to strategic business decisions.
  • For instance, if a trademark owner enters into a licensing agreement or a settlement with another party, they may agree to cancel the trademark registration as part of the terms of the agreement. Similarly, if a trademark is no longer being actively used in commerce or if the owner decides to rebrand their products or services, they may voluntarily request the Cancellation of a Registered Trademark.
  • Voluntary Cancellation of a Registered Trademark proprietor signifies a proactive approach to managing trademark rights, allowing owners to maintain control over their brand assets and make informed decisions regarding their intellectual property portfolio.

Grounds for Cancellation of a Registered Trademark in India

  • Failure to Comply with Conditions

A contravention occurs when there is non-compliance with or violations of any conditions specified by the Registry. This includes instances where the registered trademark fails to adhere to conditions outlined during the registration process. For example, if the trademark registration is subject to specific conditions regarding its color scheme, failure to meet these criteria constitutes a violation and may lead to revocation or modification of the trademark registration under Section 57(1). It’s important to note that this clause does not apply to limitations as described in section 2(1).

  • Omission from the Register

If a trademark that should have been registered with certain conditions is registered without any, this omission can be grounds for challenging the registration. This situation arises when the Registrar fails to include necessary conditions or requirements during the registration process.

  • Entry Without Sufficient Cause

When a Cancellation of a Registered Trademark violates any provisions of the Trade Marks Act of 1999 or the Trade Mark Rules of 2017 without sufficient cause, it can be challenged. This scenario typically involves errors or oversights in the registration process that result in the inclusion of trademarks that do not meet the legal requirements for registration.

If it can be demonstrated that a Cancellation of a Registered Trademark or its entry in the register is erroneous or defective, the registration of that trademark may be contested. This could include instances where the trademark violates absolute or relative reasons for rejection outlined in Sections 9 and 11 of the Trade Marks Act, or other specific requirements for registration under Sections 13 and 14.

Failure to genuinely use a trademark in relation to the products and services for which it is registered may also lead to its removal. If there is no bona fide intention on the part of the proprietor to use the trademark, it may be subject to cancellation. Additionally, if a trademark remains unused for a period of five years from its registration, it may be partially or entirely removed from the register, as per Article 47 of the Trade Marks Act.

Final Thoughts

In conclusion, understanding the grounds for Cancellation of a Registered Trademark under the Trade Marks Act of 1999 is crucial for both trademark owners and potential challengers. From failure to comply with conditions to non-use of the trademark, various factors can lead to the cancellation or modification of a trademark registration. By being aware of these provisions, stakeholders can protect their intellectual property rights and ensure the integrity of the Cancellation of a Registered Trademark system.

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