If you don't use your trademark, someone else might. To know more about trademarks, read this article carefully.
Why Might Businesses Not Use a Trademark?
There are a number of reasons why businesses might choose not to use their trademarks. Maybe the company is in the early stages of development and doesn’t have the resources to launch a marketing campaign. Or maybe the brand owner is worried that using the trademark will pigeonhole them into one specific market segment.
Whatever the reason, it’s important to remember that trademarks represent an important business asset. If they’re not used, they can be lost forever.
You come across words such as ‘logo’ and ‘name of company’ and ‘registration’. Do you know how it is processed and what it has to do with the trademark?
Let us first know what a trademark registration is and why we need one
Indeed, you’ve heard the term trademark. But one may not be clear about its benefits and why one should consider trademarking. How will it help, and how do we get started?
What Is a Trademark?
A unique name or symbol registered in the respective name represents your nature and its business. A trademark can also be defined as a name, word, phrase, logo, symbol, design, image, or a combination of these elements. A trademark identifies the owner of a brand for a specific product or service. For example, the Nike swoosh is a registered trademark that represents the company’s products. In order to be protectable, trademarks must be registered with the Patent and Trademark Office.
What Is Trademark Registration?
Under the Trade Mark Act, 1999, one can register their brand logo, protect their business, and restrict others from using it. By its registration, your intellectual property is legally owned by you. It provides exclusive rights and use of products and services to you. Misuse of the logo or brand identity would be a punishable offense.
Once registered, a trademark must be used in trade in a genuinely honest manner in relation to the goods and services for which it has been registered. Failure to use the trademark can result in its cancellation and abandonment. Non-use is a reason for removing a mark from the register, according to Section 47 of the Trade Marks Act, 1999.
According to the Section, a mark can be removed for one of two reasons:
- The trademark must have been registered without the applicant’s bona fide intent to use it. The mark had not been used for at least three months prior to the removal application.
- The mark must have been on the register for at least five years and has not been used prior to applying this section.
Before the registrar removes a registered trademark, the following conditions must be met:
- A person aggrieved has to file the application.
- The proprietor must refrain from using the trademark for at least five years and one month prior to the filing date.
- There will be no exceptional circumstances that impact the proprietor’s trademark use during this time.
The applicant is responsible for establishing the first two, while the proprietor bears the task of ensuring the third.
Registration Without Bonafide Intention to Use
It is common to apply for registration in all or a number of classes, even if they are irrelevant. This one is referred to as defensive registration. A trademark owner who has no genuine intention of using the trademark in some classes continues to register it in all or some classes in order to prevent others from registering the trademark.
According to Section 47 of the Act, this type of registration may be revoked.
The Supreme Court ruled in Kabushiki Kaisha Toshiba vs TOSIBA Appliances. The intention to use a trademark sought for registration must be genuine. When a trademark is registered, it becomes a legal entity. It grants the owner a valuable right. It attempts to distinguish between goods made by one person and those made by another. As a result, a person who has no genuine intention of using the trademark is not required to register in all classes to block the trademark.”
Non-Use for Five Years & Three Months
Assume that the trademark has not been used in the registered class for five years after registration. If it is found that it has not been used within three months from the filing date, registration is such. Trademarks may be removed from trademark registration. For this section, the registration date in the register is the date the registration certificate was issued.
An Exception Under Special Circumstances
Under certain circumstances, non-use by the owner is justified if the mark cannot be used due to circumstances for which the owner is not responsible. Such situations include divine acts and import/export restrictions.
In M J Exports Pvt. Ltd Bombay vs Sunkist Growers determined that non-use due to special circumstances such as the Government of India’s import policy, import control, and tariff duty, which were beyond the proprietor’s control, would not result in cancellation for non-use.
What Is ‘Use’ for the Purpose of Section 47?
Section 2 (2) (c) of the Act distinguishes between the use of the mark in relation to goods and the use of the mark with regard to services. It reads, in relation to the use of a mark
- in relation to goods, shall be interpreted as a reference to the use of the mark on, or in any physical or other relation to, such goods;
- shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision, or performance of such services,
In the Hermès trademark case, an intriguing decision found that the term `other relationship ‘means something other than the actual existence or physical relevance of the goods that cover the use of the mark.
Examples: advertising, invoices, etc. Large enough to contain all of the steps required to manufacture and market the product.
Even if the mark is not used on physical or physical products, it is considered to be used with the intent or direction to bring the product to market. In addition, Section 46 (3) requires that the intent of surrender is an integral part of non-use—American Home Products Corporation vs Mac. Laboratories (P) Ltd has found that ‘it is necessary to demonstrate both the owner’s intention not to use the mark at the time of registration and the actual non-use of the mark after that… Manufacture or manufacture of goods’.
If a product is underway or not yet launched in the market, you have the right to register the mark you intend to use in connection with the registered product.
Frequently Asked Questions (FAQs)
1. How to select a good trademark?
It should be simple to pronounce, read, spell, and remember if it's a word. The most suitable trademarks are unique words, coined words, or kinds of geometrical designs. Please refrain from using a geographical name, a typical personal name, or a surname. Nobody can have a monopoly on it. Avoid using effusive words or phrases to describe the quality of goods (such as best, perfect, super etc.) It is advisable to conduct a market survey to determine whether the same or similar mark is used.
2. What is the function of a trademark?
A trademark serves four purposes in today's business environment. It identifies the goods or services as well as their origin. It ensures that its quality remains constant. It promotes the products/services. It creates a visual representation of the goods/services.
3. What does the Register of trademarks contain?
It is now in electronic format, which includes the class and goods and services according to what it is registered and the details involving the scope of business. The address of the proprietor and the details of the trade and the date of application and where it has been registered, the description of trade and the rights conferred.
4. Can any correction be made in the application or register?
Yes, but the basic principle is that the trademark applied for should not be significantly altered in a way that affects its identity. Changes are permitted subject to the rules outlined in the subordinate legislation.