Business is dynamic in nature. And in this changing business environment, it is really necessary to have stability in its working. For working of the business, it needs to have a recognition mark. Such a mark is the registered trademark.
A Registered Trademark is a unique symbol or mark that a person or a company has for itself so that it can show its distinction from others. Trademark is officially registered by the owners with the government. It is generally represented with ® in the ending. A trademark when registered is valid for a period of ten (10) years.
Such a trademark is approved only when it satisfies the eligibility of the applicant under the Trademarks Act, 1999. Once a trademark is approved, it is necessary to make sure that the applicant registering such a trademark uses it in good faith only.
Need for Registering Trademark
- It is not only for the monetary benefits, but also for the expansion of the mark and the business.
- It is also necessary to quality check the brand, because if it is not done, then it will destroy the reputation.
- Section 49 of Trademarks Act lays down that the owner of the mark and the proposed user should jointly apply for the prospective user to become a registered user of the said mark.
Reasons for cancelling a Trademark by owner (Section 50 (1)(b))
- The owner of the trademark registered the mark of identity without the bona fide intention to use it.
- If the trademark is not used for 3 months prior to the date of application of registration or if the trademark is not continuously used for 5 years from the exact date of registration.
- Conflicts any existing brand mark.
- Becomes less or of no use
- Deceives public interest
- Creates confusion with other marks etc.
The application for the cancellation of a registered trademark is to be filed before the Trademark Registry.
Reasons for rectificatoin of Trademark
- Not adhering to the condition entered in the Register.
- The entered trademark was wrongly registered leading to confusion
- Error defect in any entry made in Registry.
- If the renewal fees are not paid.
Who can file cancellation of Trademark?
- The aggrieved party who also registered for same mark
- Any person who wants the mark to be removed off
- However, it cannot be filed anonymously
Cancellation of a registered trademark by others (Section 50 (1)(c))
- Cancellation is not an automatic process, but a petition has to be filed.
- The aggrieved party can file the cancellation petition before the Registrar of Trade Mark or 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.
- When it is being used by any person other that is its registered owner for any other purpose not related to the registered trademark agreement formed Section 49 (1)(a).
- When it deceives or confuses any existing trademark.
- When it has been applied falsely or on the basis of unjustified reasons by its registered owner.
- When it is being used for some other purpose or with some different intention other than the actual reason for which it was applied.
Forms used for cancelling a registered trademark
- Form TM – O: For filling appeal for cancellation of trademark violating provisions under Geographical Indication of Goods (Regulation and Protection) Act, 1999.
- Form TM – U: For filling appeal for cancellation of trademark registration by the registered owner or by any other person opposing the registered trademark under Section 50 of the Trademark Act.
- Form TM – P: For filing a request for making amendments required in the register of Trademark Registrar related to cancelled or cancellation of trademark or registered owner.
The official fee for filing an online application for cancellation is Rs 4500 per mark. And the other court charges need to be borne by the petitioner.
Cancellation by trademark authorities
In cases of non-usage or inappropriate use of Trademark, the trademark authorities can issue an order for cancellation of registration of Trademark and levy a penalty under Section 103 of the Trademark Act, 1999 on its registered owner.
Such a cancellation is however appealable before the Intellectual Property Appellate Board (IPAB).
“The views of the authors are personal“