Things To Know About the Cancellation of Registered Trademark

A trademark is a unique sign or symbol that represents a business and its products or services. Businesses register trademarks to protect their brand identity and prevent others from using similar marks. A registered trademark is crucial because it safeguards the business’s reputation, legal rights, builds consumer trust, and more. However, a registered trademark can be canceled if the rules are not followed. Business owners need to understand trademark cancellation. In this blog, you will learn about all the things to know about the cancellation of registered trademark”.

What is Trademark Cancellation?

In India, the cancellation of a registered trademark is a legal process through which a registered trademark is officially removed from the Trade Marks Register. According to the Trademarks Act, 1999, this action can happen by the Registrar or through an application filed by an interested party with a valid claim. This means that the trademark is no longer protected, and the owner loses their exclusive rights to use it. The main goal of this process is to keep the trademark register clean and accurate. It ensures that only valid and legally compliant trademarks remain protected.

Grounds for Cancellation of a Registered Trademark

According to the Trade Marks Act, 1999, a registered trademark can be cancelled on several grounds:

• Non-Use of the Trademark

According to the Indian trademark law, specifically Section 47 of the Trade Marks Act, 1999, a registered trademark can be removed from the register if it has not been used in India for a continuous period of five years or more. The non-use must be without a valid reason, such as restrictions imposed by law or other special circumstances. This rule helps to ensure that trademarks not being actively used do not stay on the register. So, other businesses have a chance to use those names or symbols.

• Contravention of the Act or Rules

As per Section 57 of the Indian Trade Marks Act, 1999, a registered trademark can be canceled if it goes against the rules of the Trade Marks Act or the related regulations. This can include situations where the trademark was registered by mistake, such as being too similar to an already existing mark or registered without proper approval. Canceling such marks helps maintain fairness and prevents confusion or harm to other businesses in the market.

• Absence or Omission of Required Entries

According to the Indian Trademarks Act, 1999, under Section 57, a trademark can be cancelled if there is an absence or omission of any entry from the register or if an incorrect entry is still listed. This process helps keep the register accurate and complete. It also helps to protect the integrity of the trademark system and ensures that the information is trustworthy for everyone.

• Removal of Collective Marks

Under Section 68 of the Indian Trademarks Act, a collective mark can be removed from the register in such situations. This includes, if the way it is used by the owner or authorized users misleads the public. Furthermore, if the owner fails to follow the rules about how the mark should be used, this can also lead to its removal.

• Removal of Certification Marks

Section 77 of the Indian Trademarks Act explains that a certification mark can be removed from the register for several reasons. This includes situations where the owner is no longer qualified to certify the quality of goods or services, or if they fail to follow the rules for using the mark. The mark may also be removed if keeping it registered no longer benefits the public, or if changes to the rules governing its use are necessary for the public’s interest.

• Fraudulent Registration

According to Section 57 of the Indian Trademarks Act, a trademark can be canceled if it was registered by fraud or misrepresentation. This includes situations where false information was provided during the registration process. This led to the wrongful registration of the mark.

• Deceptive Similarity

Section 11 of the Indian Trademarks Act allows for the cancellation of a trademark if it is found to be deceptively similar to an earlier registered trademark or a well-known mark. This provision focuses on preventing confusion among customers and protects the rights of the original trademark owner from unfair use.

• Prohibited Marks

As per Section 9 of the Trade Marks Act, 1999, some marks are not allowed to be registered. If a registered trademark that falls into these prohibited categories, it can be canceled. These include marks that are contrary to law or morality, deceptive or confusing, descriptions of the goods or services, or customary in the trade.

• Non-Compliance with Renewal Requirements

Under Section 25 of the Trade Marks Act, a trademark can be removed if the owner does not renew the registration within the prescribed time frame. Non-compliance with renewal requirements leads to the expiration of the trademark's validity. This means the trademark expires and loses its legal protection along with its trademark registration status.

Who Can File for Cancellation?

The following parties are eligible to file for the cancellation of a registered trademark under the Trade Marks Act, 1999:

• Any Aggrieved Person: An "aggrieved person" is someone whose rights or interests are negatively affected by a trademark’s continued registration. This can include competitors who think the mark is too similar to theirs, customers who feel misled, or others with a genuine reason. They may file for cancellation on grounds such as non-use of the trademark or registration obtained by misrepresentation, as specified under Sections 47 and 57.
• Registered Proprietor: The trademark owner can willingly apply for cancellation. This is usually done to withdraw the trademark or correct any mistakes in the registration details. Such applications are generally made under Section 57.
• Registered User: A registered user means someone who is allowed to use the trademark by the trademark owner. They may seek cancellation if the owner misuses the trademark or breaches their agreement, as specified by Section 50 of the Trade Marks Act, 1999.
• Registrar of Trademarks: The Registrar has the authority to start cancellation of a trademark on their own if it was wrongly registered or no longer meets legal requirements. This helps keep the trademark register accurate and up to date.
• Government Authorities: In some rare situations, government bodies may seek cancellation if the trademark registration is harmful to public interest or violates laws.

These provisions help maintain fairness and legal compliance in trademark registration.

Documents Required for Trademark Cancellation

Here are the documents required to initiate the cancellation of a registered trademark in India:

1. Depending on the specific grounds for cancellation, one of the following application forms must be filed. It includes:

• Form TM-O: Form TM-O is used for rectification or removal under Sections 47 and 57 of the Trade Marks Act, 1999
• Form TM-U: Form TM-U is required for the cancellation of a registered user under Section 50 of the Act.

2. A detailed statement outlining the applicant's interest in the matter, the facts supporting the cancellation request, and the specific relief sought.
3. Documents substantiating the grounds for cancellation, such as evidence of non-use, proof of misleading nature, or any other relevant materials.
4. If the application is filed through an agent or attorney, a duly executed power of attorney is required.
5. A copy of the trademark registration certificate pertaining to the mark in question.
6. An affidavit affirming the truthfulness of the statements and evidence provided in the application.
7. Receipt or proof of payment of the prescribed fee for the cancellation application.

Process of Trademark Cancellation

Here is the step-by-step process of Trademark Cancellation in India:

Step 1: Filing the Application

The cancellation process begins when a concerned person, called an “aggrieved party,” files an application for trademark cancellation. This is done using Form TM-26, which is useful for rectification or removal of a trademark from the register. The form must be submitted to the appropriate office of the Trade Marks Registry to begin the cancellation procedure.

Step 2: Grounds for Cancellation

When applying for trademark cancellation, the applicant must clearly mention the reasons for seeking removal. Common grounds include non-use of the trademark, contravention of the act, absence of required entries, wrongly remaining on the register, fraudulent registration, and so on.

Step 3: Examination of the Application

Once the application for cancellation is received, the Registrar examines it to ensure that all the required details are correct and complete. If the application is found to be in order, the Registrar will proceed with the next steps. 

Step 4: Issuance of Notice

The Registrar issues a notice to the registered proprietor of the trademark. This notice informs them about the cancellation request. It also gives them a chance to respond and explain their side regarding the claims mentioned in the application.

Step 5: Opportunity to be Heard

The Registrar gives the trademark owner an opportunity to be heard before making a decision on the cancellation.  This usually includes a hearing where both parties can present their arguments and show evidence. If needed, the Registrar can also accept written replies instead of a physical hearing.

Step 6: Registrar's Decision

Once the Registrar reviews the application, the responses, and any arguments or evidence, a final decision is made. If the Registrar agrees with the cancellation request, the trademark may be cancelled or rectified. Both parties are then informed of the decision through a written notice.

Step 7: Appeal to the Appellate Board

If any party is dissatisfied with the Registrar’s decision, they can file an appeal with the Intellectual Property Appellate Board (IPAB). This appeal must be done within a prescribed time. The Appellate Board will then examine the case and give a final decision.

What Happens If a Trademark Is Cancelled?

Here are the consequences of Trademark cancellation:

1. Loss of Exclusive Rights

When a trademark is cancelled, the owner loses the exclusive right to use it for their products or services. This means they cannot prevent others from using the same or a similar mark. It can lead to increased competition and potential confusion among customers when choosing between different products or brands in the market.

2. Removal from the Register

Cancellation of a trademark results in its removal from the official Register of Trademarks maintained by the Registrar. This removal means the trademark is no longer legally recognized in India. The owner loses all exclusive rights and protections associated with it.

3. Impact on Legal Proceedings

Losing trademark registration affects the owner's legal rights. The proprietor can no longer file an infringement case under the Trade Marks Act. Instead, they must depend on common law actions like passing off, which needs proof of goodwill and misinterpretation of a business.

4. Effect on Licensing and Assignments

Any licensing agreements or assignments related to the cancelled trademark may become void or unenforceable. Licensees may lose the right to use the mark, and any assignments of the trademark may be rendered ineffective.

5. Repercussions for International Registrations

Cancellation of a trademark is a part of an international registration under the Madrid Protocol can have broader consequences. Once the mark is cancelled in India, the International Bureau of WIPO may be informed. This may impact the trademark’s validity in other countries. This can lead to its cancellation or rejection in those foreign jurisdictions as well.

6. Market and Brand Impact

The cancellation of a trademark can lead to brand dilution and loss of market identity. Competitors may adopt similar marks. This led to consumer confusion and erosion of brand value.

How to Avoid Trademark Cancellation?

Businesses must use the trademark continuously and genuinely to prevent cancellation in India. As per Section 47 of the Trade Marks Act, a trademark can be cancelled if it remains unused for three consecutive years. As a trademark owner, you must maintain clear records of trademark use. Registration should be renewed every ten years by filing Form TM-12. A trademark owner must also update any changes in ownership or contact information through the appropriate forms to keep the trademark details current.

Conclusion

Trademark cancellation in India is a crucial mechanism to maintain the integrity of the Trade Marks Register. It helps ensure that trademarks are legally used, properly maintained, and remain valid for continued protection. Business owners must stay informed, use their marks actively, meet renewal deadlines, and comply with all legal requirements to safeguard their rights and avoid cancellation. A proactive approach is key to protecting brand identity and legal exclusivity. If you want to cancel your trademark for your business, contact Online Legal India. They have experts to assist you.