corporate law
The foundation of Trade Mark law in India began in 1938 with the adoption of the British Trade Mark Act, leading to the establishment of the first Trade Mark Act in 1940. Following India’s independence, this framework evolved into the Trade & Merchandise Mark Act, 1958. Currently, the legal landscape for trademarks in India is governed by the Trade Marks Act, 1999.
According to Section 25 of the Trade Marks Act, 1999, a trademark can be registered for a period of 10 years from the registration date. This registration can be renewed for additional 10-year periods, provided that renewal fees are paid and applications are submitted in the prescribed manner. It is crucial to understand that the registration of trademarks is not an assurance of permanent validity.
Circumstances may arise where a mark is erroneously registered, remains incorrectly on the register, or has not been utilized for a specified duration.
In such instances, the Trade Marks Act, 1999 outlines two procedures: Cancellation and Rectification of trademarks. Applications for Cancellation can be submitted to either the Registrar of Trademarks or the Intellectual Property Appellate Board (IPAB).
Under Section 57 of the Trade Marks Act, 1999, any aggrieved individual may file a cancellation request with the Intellectual Property Appellate Board aimed at revoking or altering a trademark’s registration.
In certain situations, the trademark owner can voluntarily cancel their trademark registration in India. This voluntary cancellation often results from agreements with third parties or other business considerations.
A cancellation petition may be pursued if there is a violation of any conditions set forth by the Registry. It is important to note that this clause does not pertain to limitations specified in Section 2(1).
For example, if a trademark is subject to specific requirements regarding its color scheme, non-compliance with these stipulations can warrant revocation or modification of the trademark registration as per Section 57(1).
This ground is applicable when a trademark that should have been registered with certain conditions has been registered without them.
If it is established that any provisions of the Trade Marks Act, 1999, or the Trade Marks Rules, 2017 have been violated in connection with a registered mark, that mark may be contested due to the lack of sufficient justification for its registration.
A registered trademark can be challenged if it can be shown that there was an error in keeping the trademark or its entry in the register.
A trademark registration should not have occurred if it violates any of the following:
If there has been no genuine use of the trademark in relation to goods or services for a period of three months prior to the application, or if the trademark was registered without any bona fide intent by the proprietor, it may be subject to removal as per Article 47.
Additionally, a trademark cannot be enforced if it has not been utilized within five years of its registration.
The Calcutta High Court tackled trademark non-use in this case, noting, “Using a mark does not necessarily require the actual sale of products bearing that mark; even advertising can constitute use." This highlights that use should align with genuine market practices, while malicious use indicates that the registration was not intended for legitimate purposes.
This case involved a petition to remove trademark No. 1058481 registered under class 09 by Dr. Reddy’s Laboratories. Red Bull contended that Dr. Reddy’s slogan “Your wings to life” was confusingly similar to its own mark “Gives you wings.” The IPAB concluded that the two trademarks were neither deceptively similar nor identical and noted that a party must demonstrate they are aggrieved by the non-use of the mark for the matter to be addressed.
The Delhi High Court underscored that registration under Section 31(1) serves merely as prima facie evidence of validity but is not conclusive. If cancellation efforts fail, the registration will hold as conclusive evidence of validity.
Understanding the procedures and grounds for trademark cancellation is essential for both proprietors and aggrieved parties. The Trade Marks Act, 1999 provides a structured approach to addressing issues surrounding trademark registration, ensuring that marks are used genuinely and comply with legal standards.