Legal AdviceTrademarks

What Is the Validity of a Non-use Trademark?

Any person can submit a trademark removal application. This means that your competitors, and any other person, can file an application for removing your mark

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There are uncertainties surrounding us at all levels, stages and facets of life. The pandemic has only reinforced this belief. In the business world as well, companies may be forced out of business, shut down or cease to operate. In such a scenario, what happens to the trademark? This article answers questions on trademarks that become non-use trademark and the consequences thereof. 

What Is the General Validity of a Trademark?

A trademark in India is granted for a period of 10 years from the date of registration of the trademark mentioned in the certificate. However, if a trademark owner has not used the mark for more than 63 months, then he may lose his trademark rights in such opposition or rectification proceedings. 

How Is the Right to Use a Trademark Granted?

A trademark offers the right to protect the business identity. Let us first understand how can a business generate the right to use the trademark in India – 

  • Once you submit your application to the trademark office, the primary examination would begin. This is to see the accuracy of factual details. This includes files in the right class, with other correct details. 
  • After acceptance of your trademark application, the registrar will publish your mark. This means printing of the trademark name or symbol or both in the Trademark Journal.
  • At this stage, the name or logo or both with trademark has been advised in the Trademark Journal inviting objections, if any.
  • If there are no other objections or oppositions received for the mark, the application stands accepted. It would then be marked as ‘Registered’. This is when the Trademark applicant can start using the ® symbol next to the logo or name. 

When Should You Start Using the Registered Trademark?

While there is no specified time limit for using the trademark, you must start using it at the earliest. This means, even before the trademark registration certificate is actually granted, the mark can be used. You can use your trademark within and outside the company. This includes printing your trademark on billboards, the official website of the brand, notices, internal communications of the company and its advertisements. 

Does Renewal of Trademarks Mean a Trademark is Permanent? 

No. The trademark is not granted permanently. The trademark laws provide that a trademark with a registration has to get a renewal every ten years. They can also get removed because of non-use. Thus, a company not using its registered trademark for a continuous period of five years from the date of registration of the trademark would lose rights over the mark. 

How Can a Trademark Be Removed for Non-use?

  • Any person can submit the trademark removal application. This means that not just your competitors but also any other person can file an application for removing your mark. 
  • Grounds for removal of registered trademark for non-use –

A trademark removal can be on any of the following grounds:

No bonafide Intention – If a trademark has been casually filed without the intention that it should be used in relation to those goods or services, it may be removed. 

Non-use for five years – When a trademark has not been used for a continuous period of five years from the actual date of registration, it can be removed from the trademark registry. This period of five years begins from the date on which the trademark formally enters the register. This is different from the date of application for registration of the trademark being the date of registration. 

What Qualifies As “Bonafide Use” of a Trademark? 

According to the legal provisions, bonafide use means – honest and genuine use. It must be “not pretended”. So, a company using a trademark in its documents and interactions with the public would constitute “bonafide use”. This is to judge by ordinary commercial standards. 

Under What Circumstances Would a Trademark Not Be Removed?

The trademark law provides for three situations where despite non-use of the trademark, it would not be removed. These are – 

  • When the applicant intends to form a company and then register it under the Companies Act. Thus, non-use while waiting to assign the trademark to that company is excusable. 
  • The owner of the mark intends it to be used by another person. Thus, if you’re waiting for the mark to get registered in the name of another person, the trademark cannot have removal.
  • Special commercial circumstances – If the non-use of a trademark is not due to the proprietor’s mistake but special situations prevailing. For example, restrictions on the use of a certain trademark imposed by any law or regulation. Some companies may also require to wait for international or domestic approvals. Thus, in the interim period, they may have an excuse for using the mark. 

Partial Removal of a Registered Trademark

Partial removal refers to removing some element of the trademark. 

  • If there are two trademarks that are similar in their registration, one proprietor may apply to the registrar to remove the other resembling a trademark that has fallen into non-use. 
  • On such an application by that person for removal of the other trademark due to its nonuse, the trademarks tribunal can also impose limitations on the use of the registration of the first-mentioned trademark.
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