Trademark registration isn’t set in stone. There are several grounds to cancel a trademark. If you want to cancel one, you need to follow the below-mentioned steps
Any aggrieved person can file a petition in a prescribed manner seeking rectification or cancellation of the mark before the Trademark Registry Office or Intellectual Property Appellate Board (IPAB). In this article, you will learn about the rectification/cancellation of a registered trademark in India.
Cancellation of a Trademark
Cancellation of a registered trademark is a legal procedure in which an aggrieved person or party seeks to remove a registered trademark from the registry. Section 47 of the Trademark Act deals with rules of removing trademarks.
Two Key Reasons for Cancellation of a Trademark
- If the owner of the trademark registered the mark of identity without the bona fide intention to use it.
- Not using the trademark for 3 months before the date of application of registration or not using it for 5 years from the exact date of registration.
Grounds of Trademark Cancellation
An aggrieved person can request for cancelling the trademark either within 5 years of trademark registration or after 5 years of registration.
Trademark cancellation within 5 years, if it is:
- Deceiving the public
- Creates confusion within the business
- Too descriptive
- Just a geographically descriptive
- Not defended by the applicant for at least 3 years
Trademark cancellation after 5 years if:
- The mark has become too generic (commonly used)
- If the proprietor registered by fraudulent means
- The trademark contains obscene things
- It is disparaging
What Is Rectification of a Trademark?
Rectification is a legal process to make a correction or rectify an error that has been made while registration.
List of Reasons for Rectification of a Trademark
- Not adhering to the condition entered in the register
- If the proprietor wrongly registered the entered trademark, which caused a lot of confusion among the other trademarks
- Error/defect in any entry made in Registry
- If the proprietor did not pay the renewal fees.
How Rectification Affects the Trademark?
After hearing the plea by giving equal opportunity to the concerned parties, they may remove, cancel, or rectify the trademark entry in the registry.
Who Can File the Rectification/Cancellation of Trademark?
- A person affected/damaged by the registration or someone who has a pending application for the same mark
- Or, any person wanting to remove the mark to fend off the damage if the mark is determined
- It cannot be filed anonymously, the onus of proving the identity remains on the owner.
Trademark Cancellation by Its Registered Owner
A registered trademark proprietor is allowed to apply for the cancellation of their trademark registration. There are situations where the registered trademark proprietor might want to cancel the trademark registration. The situations are when the approved trademark:
- Is similar to conflicts with another existing brand mark
- Causes confusion with other trademarks
- Is of no or less use
- Swindles public’s interest
The above-mentioned reasons or others, that one deems fit, may force the proprietor to cancel the registered trademark. For the cancellation of trademark registration, one must apply for the removal of the trademark from the register of the Trademark Registrar.
Cancellation of Trademark by Other Persons
A person can appeal to cancel the registered trademark only if they have been affected by the existence of such a trademark. The authority validates it under the following grounds:
- When it confuses or dupes any existing trademark
- When a different person uses it and not the registered owner. The reason must not be related to Section 49(1)(a) trademark agreement formed
- If it is being used for other purposes and not for the intended purposes it was applied for
- Also, when wrongly applied or for any unjustifiable reasons of the owner.
It is expected to take years for a trademark application to be confirmed. However, it doesn’t take any for a person to apply for the cancellation of the trademark. This is only when the person applying for the cancellation is strained by the trademark.
What Does the Petition for Rectification/Cancellation Contain?
- The details of the parties and factual background information for cancellation
- The petition is filed in the trademark office where it was originally registered.
Forms for Trademark Registration Cancellation
The three options of forms used for filing the cancellation of the registered trademark are:
- Form TM – O: Appeals filed for cancelling the trademark that violated the provisions provided under the Geographical Indication of Goods (Regulation and Protection) Act, 1999.
- Form TM – U: Appeal filed for cancelling the trademark registration. The registered owner or any other person who is combating the registered trademark file for cancellation. The authorities perform the cancellation according to the laws under Section 50 of the Trademark Act.
- Form TM – P: Request filed for a correction or alteration in the register of Trademark Registrar linking to the cancellation of the trademark or the cancellation of the registered owner.
Is the Registrar Order Appealable?
The decision of the Registrar of trademarks is surely 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. Usually, the court’s Division Bench hears it. As of Delhi High Court, a single judge bench addresses it.
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