Effect of Non-Use of Trademarks

Critical Overview Of The Effect Of Non-Use Of
Trademarks
January 28, 2023 IPLF Trademark
Introduction
A trade mark provides protection to its owner by securing the owner’s
exclusive right to use it or by granting another party permission to do so in
exchange for money. Despite the fact that the duration of protection varies, a
trademark can be renewed in perpetuity by paying additional fees after the
first term has expired. In a larger sense, trademarks stimulate initiative and
entrepreneurship by providing their owners with renown and financial
reward. Trademark protection also prevents unscrupulous rivals, such as
counterfeiters, from using similar unique marks to market inferior or
unrelated goods or services. Promoting global trade, the system enables
anybody with initiative and skill to manufacture and sell goods and services
under the most ethical standards. [i]
[image Sources : Shutterstock]
Properly called, a trademark denotes origin or acts as a flag of origin since its
primary function is to identify the source or origin of products or services. In
other words, trademarks identify a certain corporation as the source of
products or services. This form of trademark utilisation is known as trademark
use. A registered trademark confers exclusive rights. [ii]
Rectification of Registers in case of Non-Use

It should be emphasised that, assuming there are no other trademark
objections, trademark rights often derive from the use of a sign in relation to
certain products or services, or from the preservation of exclusive rights over
that sign. In India, Section 47[iii] of the Trademarks Act defines two situations
under which a registered trademark may be revoked:
• If it can be shown that the trademark was registered without a bona

fide purpose to use it, the registration will be invalidated. When doing
trademark searches, we frequently encounter several applications that
have been filed in all 45 classes, despite the fact that the mark is only
utilised in one or two classes. This is a defensive registration, and the
Supreme Court has repeatedly ruled that such registrations should not
be promoted.
• If the trademark has not been used for a continuous period of five years
from the date of registration and three months previous to the filing of
the application for registration, the registration will be cancelled.
Therefore, if the mark has not been used for five years and three
months, any aggrieved party may initiate rectification actions.
Therefore, in the first type of case, if someone can demonstrate that the
applicant did not intend to actually use the mark, they may file a petition to
have it cancelled; in the second type of case, even if there was some initial
usage, if the mark was not used continuously for five years after its
registration, an application for rectification may be filed. [iv]
Non-Use Cancellation
In India and other countries, trademark non-use cancellation refers to the
removal of a registered trademark from the Register of Trade Marks based on
the trademark’s non-use in relation to the goods or products specified in the
registration application for five years after its registration and three months
prior to that date. This is also known as the removal of a trademark from the
registry for lack of usage. Section 47 of the Indian Trade Marks Act of
1999 governs the withdrawal of any registered trademark from the Register
of Trademarks only on the basis that the brand has not been used in
connection with the specified goods or products within the stipulated time
period.7
Effect of Non-Use
If the registered trademark has not been utilised in good faith, it may be
revoked for non-use. Concerning the removal of a registered trademark from
the trademark registration, Section 47 of the Trademarks Act of 1999 outlines
two fascinating scenarios. Clause 2 of the same Act governs the cancellation
of a trademark following at least five years of inactivity. This period is
calculated from the date of registration up to three months previous to the
filing of the removal application. On form TM-1, which provides information
about a trademark, the status of the trademark’s use must be specified.
According to section 46 of the Act, a number of trademarks are registered as
“intended to be used.” This knowledge is accessible to everyone and is
commonly relied upon by individuals. As stated previously, if the mark is not
used within five years, it is subject to cancellation. [v]
Rectification Proceeding
A “person aggrieved” may make a request for cancellation or withdrawal of a
registered trademark based on non-use. If the previous registration has been
posted on the Register for more than five years, the defendant in opposition
proceedings may require proof of actual usage. The concerned zonal registrar
of trade marks or the Intellectual Property Appellate Board must receive any
requests for corrections to the register of trademarks or for the removal of
any registered brand from the register (IPAB). [vi]
Once opposition proceedings have been initiated and it has been determined,
based on the facts and circumstances, that the trademark owner has not used
the mark for the requisite period of time, he has no remedy. However, if no
application for rectification for the removal of the trademark is made by a
dissatisfied party and the registered proprietor starts using the trademark
legitimately after the required five-year period, nothing prevents the
registered proprietor from registering a trademark even if it hasn’t been used
legitimately for the required amount of time. [vii]
Conclusion
Trademarks play a crucial role in identifying a company as the source of goods
or services. They provide protection to their owners by securing exclusive
rights to use the mark or by granting permission to others to do so in
exchange for money. The Indian Trade Marks Act of 1999 addresses the
removal of registered trademarks from the Register of Trade Marks if they
have not been used continuously for five years and three months. A “person
aggrieved” may also make a request for cancellation or withdrawal of a
registered trademark based on non-use. It is important to note that
trademark rights often derive from the use of a sign in relation to certain
products or services, or from the preservation of exclusive rights over that
sign. Overall, trademark protection promotes initiative and entrepreneurship,
prevents unscrupulous rivals from using similar marks, and promotes global
trade under ethical standards.
Author: Sanskar Pandey, a student of National Law University & Judicial

Academy, Assam, in case of any queries please contact/write back to us
at [email protected] or IP & Legal Filing.
References
[i] Trademark Non-Use Cancellation, available at
http://www.trademarksindia.net/trademark-non-usecancellation.php, last
seen on 05/05/2020 S.47, Indian Trade Marks Act of 1999
[ii] World Intellectual Property Organisation (1997). Introduction to

Intellectual Property: Theory and Practice. Kluwer Law International. p. 23
[iii] S. 47, The Trade Marks Act, 1999.
[iv] https://selvams.com/rectification-of-trademark-in-india-on-groundsof-

non-use/, last seen on 05/05/2020. 7 Trademark Non-Use Cancellation,
available at http://www.trademarksindia.net/trademark-non-
usecancellation.php, last seen on 05/05/2020 S.47, Indian Trade Marks Act of
1999.
[v] Tehemtan N. DARUWALLA, the requirement of genuine use of trademarks

for maintaining protection, Report Q218, pages 4-9
[vi] Rectification Proceedings, available at https://selvams.com/rectification -

of-trademark-in-india-on-groundsof- non-use/, last seen on 09/05/2020.

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Critical Overview Of The Effect Of Non-Use Of

[image Sources : Shutterstock]

Rectification of Registers in case of Non-Use

• If it can be shown that the trademark was registered without a bona

Author: Sanskar Pandey, a student of National Law University & Judicial

[ii] World Intellectual Property Organisation (1997). Introduction to

[iii] S. 47, The Trade Marks Act, 1999.

[iv] https://selvams.com/rectification-of-trademark-in-india-on-grounds- of-

[v] Tehemtan N. DARUWALLA, the requirement of genuine use of trademarks

[vi] Rectification Proceedings, available at https://selvams.com/rectification -

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