The Trademark law provides a platform to companies, individuals, etc., to protect their labels, logos, symbols, etc., from being used by anyone else by registering the same. However, while the registration protects the trademarks, these trademarks stand to be revoked on various grounds. Trademark revocation as a concept can be understood as a way of having the already registered trademark removed in part or whole. There are many grounds for revocation to occur – one of them being “Non-Use of the trademark.”
For determining the non-use first, the term use needs to be understood, which can only be defined as when the goods or services of the said trademarks are in the sale, etc. The trademark law has laid down the period after which a trademark would be canceled for non-use, and that would be a continuous period of 5 years and 3 months from the date on which the mark was registered in the trademark registry.
PURPOSE
To revoke a trademark under the ground of non-use, the factor to be considered is that the mark is not used only to preserve being registered. If such a thing happens, then it would directly amount to the mark being canceled or revoked. Thus, it is essential to check that the mark has been in commercial use to prevent a trademark revocation on the ground of non-use. Besides this, an exception to this could be that if the mark is used for even a single incidence during the relevant period of 5 years and 3 months, then the mark would not be canceled for non-use. When the certificate of registration is issued to the individual or company, it is considered the date of entry into the register.
POSITION IN INDIA
In India, the Trademarks Act, 1999 deals with the term ‘use’ of trademarks, and Section 47 of the Act provide for when a registered trademark could be taken off the register if a person has filed an application about the registrar of the trademark having no intention to actually use the trademark by the individual or a company for 5 years[1] and the mark has also not been used for three months before the application of cancellation is made. [2]It can be seen in the cases such as J N Nicholas Ltd v Rose and Thistle Indian courts where it had been interpreted that ‘use’ does not only mean or an actual physical sale; even just an advertisement without the actual existence of the goods can be termed as ‘use’ of the mark[3].
The Indian courts to protect the rights of the registrants have laid down that a registered mark can be canceled or revoked on the grounds of non-use once the timeline of 5 years and 3 months, but for that actually to happen, solid proof needs to be given that the mark has actually not been in use for 5 years and 3 months preceding the filing of cancellation of the trademark.
This can be understood by way of an example: suppose if the certificate of registration were issued for a mark in January 2006, it would be up for cancellation for non-use on April 2011, but if an application for cancellation is filed in September 2019, then for cancellation of the trademark on the grounds of non-use for 5 years and 3 months it has to be proved that it has not been in use since June 2014 to June 2019 and any prior non-use of the trademark before June 2014 to June 2019 would be considered not applicable to apply for cancellation of a trademark based on the criteria of non-use.
PROCEDURE
The procedure that needs to be followed for rectification in the registry of a trademark, or the process of cancellation of a registered trademark from the register, has to be filed at the concerned zonal Registrar of TradeMarks or with the Intellectual Property Appellate Board (IPAB).
[1] Section 46 of the Act deals with the registration of a trademark by a company to be formed.
[2] Wadhera B L, Law Relating to Patents, Trademarks, Copyright, Designs, and Geographical Indications, 3rd edn, (Universal Law Publishing Company, Delhi), 2004, p. 222.
[3] J N Nicholas Ltd v Rose and Thistle, 1993 (II) CHN 395 (Cal) (DB) as cited in Chowdhury S K Roy et al., Law Relating to Trademarks Copyright Patents and Designs, 1st edn, (Kamal Law House, Calcutta), 1996, p. 378.