INTRODUCTION
A registered trade mark 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 or if the mark is wrongly registered or wrongly remaining of the trade mark register. A person aggrieved has the option of filing for cancellation petition before the Registrar of Trade Mark or before the Intellectual Property Appellate Board (hereinafter referred to as IPAB). However, when a civil suit is pending in the Court of Law and a person desires to seek cancellation of a registration, such a petition can be filed only before the Intellectual Property Appellate Board. 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 petition is maintainable before the jurisdictional High Court. Whereas in Chennai, Mumbai and Kolkata such a writ is heard by a Division Bench, in Delhi High Court such a writ is heard by a Single Judge.
Who can file rectification petition
The aggrieved party is entitled to file a petition for the cancellation of registration or removal of the registered mark.
Grounds for filing an application for trademark rectification or cancellation:
- That the registration was made without sufficient cause or registration was obtained by misrepresentation of facts, similar to an earlier mark registered.
- That the mark was wrongly remaining on the register in case it is against to some legal provisions of the Act or likely to cause confusion.
- Making any changes, amendments, or modification in connection with any registered trademark as per the recent advancement.
- Non-renewal of the original or previous registration of the trademark.
- Non-use of any registered trademark for more than five years by the registered proprietor.
- A registered trademark could be expunged from the register in case registration is obtained by fraud. Particularly, where the registration has been obtained by suppression of material fact or false statement it is known as registration obtained by fraud.
- Inclusion or addition of certain more class or goods or services, in case it is against to the business extent of the registered trademark.
- Non-conformity with one or more grounds stipulated in Section 9 and Section 11 of the Indian Trade Marks Act of 1999.
Procedure for trademark cancellation in India:
For filing of the cancellation before the Registrar, the application form must be filed in prescribed form. The application must include the statement of case, and submit along with the prescribed fee. On receipt of the application, the Registrar serves notice to the registered proprietor to file a counter statement. Once the counter statement is filed the matter arrives at the evidence stage. The parties may require filing their respective evidence in the form of an Affidavit. After this, there will be a hearing. Subsequently, the order is passed.
While, filing the cancellation before the IPAB, cancellation petition is filed along with Statement of Case, affidavits and exhibits. On receipt of the application, the IPAB serves notice to the registered proprietor to file a counter statement along with affidavit and exhibits. After this, there is hearing and subsequently, the order is passed.
FORMS & FEES
| Forms | Purpose | Government Fee(INR) |
|---|---|---|
| TM O | Application for rectification of register or Counter Statement (for each class) | 2700 |
FAQS
The legal procedure for removing the registered trademark from the register by filing a formal application for cancellation/ rectification by the aggrieved party either before the Registrar or the IPAB.
- That the registration was made without sufficient cause or registration was obtained by misrepresentation of facts, similar to an earlier mark registered
- That the mark was wrongly remaining on the register in case it is against to some legal provisions of the Act or likely to cause confusion.
- Making any changes, amendments, or modification in connection with any registered trademark as per the recent advancement.
- Non-use of any registered trademark for more than five years by the registered proprietor.
- Non-renewal of the original or previous registration of the trademark.
- A registered trademark could be expunged from the register in case registration is obtained by fraud. Particularly, where the registration has been obtained by suppression of material fact or false statement it is known as registration obtained by fraud.
- Inclusion or addition of certain more class or goods or services, in case it is against to the business extent of the registered trademark.
- Non-conformity with one or more grounds stipulated in Section 9 and Section 11 of the Indian Trade Marks Act of 1999.
Trade Marks Act, 1999 permits an ‘aggrieved person’ to initiate the rectification/cancellation proceedings. An ‘aggrieved’ person implies any party whose business or commercial interests are hampered by the presence of the mark being applied for cancellation.
Cancellation proceedings may only be instituted where the trademark in question was initially registered. The 5 Trade Mark Registries are Ahmedabad, Chennai, Delhi, Kolkata or Mumbai.
After receiving the Rectification Application and fees the Registrar calls upon the Registered Proprietor to file a Counter Statement in his defence post which both parties file their evidence in the form of affidavits. The matter then succeeds to the stage of completion of final hearing and order is made thereafter on merit of oral proceedings.
Yes, Intellectual Property Appellate Board (IPAB) is the appealable forum against orders passed by the Registrar. Appeals can only be filed within a period of three (3) months after such order has been passed.
A particular trademark attracts cancellation on the ground of non-usage as soon as a period of 5 years elapses starting from the date of issuance of the registration certificate with respect to such trademark. Even a single sale suffices to ward-off the charge of non-use of cancellation. However, if the trademark is question is consistently inactive throughout these 5 years, it attracts an action of cancellation.
Yes, following are the defences to a non-use cancellation action:-
- General glut in the market.
- Low demand of goods in the market.
- Restrictions on import.
- Wartime restrictions.
Yes, there is an option of cancelling the trademark of only certain goods or services that are problematic. The proprietor may choose to withdraw only specific goods or services which are hindrances to the trademark application without the requirement to cancel the registration in entirety.
Considering the piling backlog before the Trade Marks Registry, cancellation proceedings before the IPAB could prove to be quicker in pace.
An aggrieved person may file for cancellation before the Registrar of Trade Mark or before the Intellectual Property Appellate Board. However, when a person desires to seek cancellation of a trademark registration while the pendency of a civil suit, he can only file such a petition in the IPAB.
Yes, there are certain grounds for removal of a trademark which are bound by a deadline of 5 years from the date of registration. This 5 year period, however applies to claims such as possibility of confusion and mere descriptiveness.
When a trademark is published in the Trademarks Journal before registration, the general public has an option of an additional 1- month window to oppose the mark in question. However, the publication period has already passed, anyone with standing may still challenge the resulting registration by filing a cancellation.