Removal of registered trade mark for non-use in India

Removal of registered trade mark for non-use in India



A trade mark which is not used within five years of its registration becomes liable for removal either completely or in respect of those goods or services for which the mark has not been used. The object of this provision in section 47 is that a person cannot be permitted to register a trade mark when he has not used it in relation to the goods or services in respect of which it is sought to be registered or does not intend to use it in relation to those goods or services, as the registration confers valuable rights upon the registered proprietor. This is borne out of section 18 of the Act which enables a trade mark to be registered by “any person claiming to be the proprietor of the trade mark used or proposed to be used by him”. The only two exceptions which are contained in section 46 providing for application for registration to be made by a person who does not use or propose to use the mark are –  a) A company which is about to be formed and registered under the Companies Act and the applicant intends to assign the trade mark to that company; or b) Proprietor intends it to be used by a person to be registered as the registered user, after the registration of the mark.  An application for removal of registered mark under section 47 may be made to the Registrar or to the Appellate Board . The procedure before the Registrar in such cases is prescribed in rule 92. Application will be made on form TM-26 together with prescribed fees and accompanied by a statement in triplicate setting out fully the nature of applicant’s interest (viz. demonstrating as to how the applicant claims to be an “aggrieved person”), the facts upon which he bases his case and the relief which he seeks. Where there are registered users, such application and statements shall be accompanied by as many copies thereof as there are registered users. Under rule 92, a copy of each of the application and statement of case will be transmitted by the Registrar to the Registered Proprietor and to the registered users and any other person who appears from the register to have an interest in the trade mark.  Thereafter within two months from the date of receipt by the registered proprietor of the copy of the application, the Registered proprietor will send his counterstatement on form TM-6 in triplicate setting out the grounds on which the application is contested.  The Registrar will serve the copy of the counterstatement on the applicant. Thereafter,  the provisions of rule 50 to 57 will apply mutatis mutandis to the further proceedings on the application. Rule 93 clearly lays down that the Registrar will not however remove the mark merely because the registered proprietor has not filed the counterstatement,  unless he is satisfied that the delay in filing the counterstatement is willful and is not justified by the circumstance of the case.