An aggrieved person can challenge the rights of a trademark owner on certain grounds. In this article, you will find all details about challenging trademark rights after five years of trademark registration.
Challenging the Registration of a Trademark
Challenging trademark means to object to its registration. When a trademark registration is less than five years, there are certain grounds on which the trademark rights can be challenged as laid down by the Trademark Act., 1999. But once a registered trademark gets older than five years, it becomes more difficult to invalidate or challenge the trademark rights.
Vakilsearch‘s free trademark search tool helps you to check trademark availability before you begin the registration process.
Who Can Challenge the Registration of a Trademark in India?
A registered trademark can be challenged by any aggrieved party in India. An aggrieved party is any person or company :
- Whose interest lies in the removal of the trademark in question, or
- Whose interest is damaged if the entry of the registered trademark remains in the trademark journal.
Challenging a Trademark After Five Years of Registration
Once a trademark registration period is over five years, then it can be cancelled on any of the following grounds:
- The registered trademark has become too generic for the goods and services, or a certain portion of the mark has become common
- The trademark defines a functional use
- The registered trademark is derogatory
- The proprietor has lawfully abandoned his or her trademark
- If the trademark has been registered in a fraudulent manner or the trademark has not been published under the Trademark Act, 1999
- If the registered trademark is deceptive, scandalous, or immoral, or the owner allows the use of the trademark incorrectly. Check Here to more about : https://ipindia.gov.in/
Cancellation on the Grounds of Non-use of the Registered Trademark
A registered trademark can be cancelled if a registered trademark proprietor does not use the trademark for five years or more, concerning the goods or services it was registered for. Such five years are calculated from the entry date of the trademark in the trademark register.
Circumstances Under Which the Non-use of a Registered Trademark Would Not Result in Cancellation
There are certain exceptions to such cancellation if the proprietor provides special reasons with evidence for the non-use of the trademark. The trademark law of India has rolled out the following three such situations where the non-use of a registered trademark would not result in cancellation:
- If an applicant wants to form a company and then register the trademark under the Companies Act, 2013. The trademark law thus provides an exception to the non-usage of the trademark while waiting to assign the trademark to the company
- If the trademark owner intends to get the registration in the name of another person, it cannot be removed
- A registered trademark cannot be cancelled if the non-use of the trademark is not because of the proprietor’s mistake, but some special commercial circumstances such as the imposition of the non-use by the law
- Certain companies may be required to wait for international or domestic approval. In such interim period, the registered trademark shall be excused from cancellation due to non-use.
Things to Remember for Trademark Cancellation
- The application form to cancel the trademark application has to be filed in triplicate
- The cancellation petition must mention and explain all the details, and the grounds on which such cancellation is being applied for
- The applicant’s arguments must be supported with strong evidence for the cancellation to be successful.
How Vakilserarch’s Services Can Benefit You
As the process of cancellation of a registered trademark may seem tedious, long, and cumbersome, it is suggested to approach legal experts like Vakilsearch. Professionals at Vakilsearch can guide you throughout the cancellation process, and provide you with legal advice that could help you in your claims for cancellation of a registered trademark. The business experts at Vakilsearch stay updated with the latest rules, regulations, and laws, so that they perform the trademark services rightfully, and lawfully.
FAQs
What is the process to challenge a trademark?
The process to challenge a trademark involves filing an opposition, providing legal grounds, and presenting evidence to the Registrar of Trademarks. If unsuccessful, you can escalate to court for further litigation.
How can I file a trademark opposition?
You can file a trademark opposition by submitting Form TM-O within four months of the publication of the trademark in the Trademark Journal. Grounds for opposition include similarity or prior usage.
What are the common grounds for challenging a trademark?
Common grounds for challenging a trademark include lack of distinctiveness, likelihood of confusion with existing marks, descriptive nature, or violation of public policy.
What is trademark cancellation and how is it done?
Trademark cancellation is the removal of a registered trademark due to invalidity. It can be initiated by filing a petition with the Trademark Registrar or through a court case.
How long does the trademark opposition process take?
The trademark opposition process typically takes 12-18 months, depending on the complexity of the case and whether it proceeds to court.
What happens if a trademark is infringed?
If a trademark is infringed, the trademark owner can file a case for injunction, damages, or seek revocation of the infringing trademark through legal proceedings.
Can a trademark decision be appealed?
Yes, a trademark decision can be appealed to the Intellectual Property Appellate Board (IPAB) or court if the Registrar’s ruling is unfavorable.
