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This article is written by Shruti Kulshreshtha pursuing B.B.A. LLB from Symbiosis Law School, Hyderabad. This article gives the detailed procedure to be followed while filing for the removal of a registered trademark under Section 47 of the Trademark Act, 1999 and the different aspects to be considered while doing so.

Introduction

The Trademark Act, 1999 (hereinafter referred to as the ‘Act’) provides for the cancellation of a registered trademark by the registrar under Section 47 of the Act. Upon the interpretation of the Act, it is observed that there are certain user requirements mandatory to be complied with, in order to bring forth a mechanism for non-use of the registered trademark. The Trademark user requirement is a period of time in which the registered trademark is imperative to be used, failing which it is subject to cancellation. These requirements are given strict enforcement by the Act and the Courts. When we talk about canceling a registered trademark, it means following the legal procedure of removing the trademark from the registry. This is dealt with under Section 47 of the Act.

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Section 47 of Trademark Act, 1999

A trademark is valid for a period of 10 years after which it needs to be renewed for using it again. If a trademark holder fails to use the trademark or fails to renew it, the trademark is liable to be canceled or removed from the trademark registry. Chapter VI of the Trademarks Act, 1999 deals with the use of trademark and registered users and Section 47 permits the removal of the trademark upon non-use. Section 47 lays down two situations in which a registered trademark is liable to be removed:

  1. When it is proved that the trademark was registered in the absence of a bona fide intention by the applicant. This bona fide intention is in the context of the use of the trademark. For example, when a trademark is registered in 40 classes but is used only in 2 classes, it is a defensive registration. This rule applies to Companies and registered users where no bona fide use is observed in relation to the goods and services for a period of 3 months before the date of application. 
  2. When it is proved that there has been no bona fide use of the trademark for a continuous period of 5 years from the date of registration of the mark and three months prior to filing the application for registration. This means that when the trademark has not been used with a bona fide intention for a continuous period of 5 years and 3 months, it is liable to be removed. 

However, the registered trademark may not be removed if the case fulfills the requirements mentioned under clause 3 of Section 47, which are:

  1. A company is about to be registered under the Companies Act and the registered proprietor intends to assign the trademark to be the company in the near future.
  2. The Registered proprietor intends the trademark to be used by a registered user upon its registration.
  3. The alleged non-use of the trademark is under special circumstances, such as restricted use by law, which does not relate to the intention of the proprietor.

Who can file for rectification of Register

A petition of rectification of the register may be filed by any person aggrieved for the removal of the trademark. This application can be made before the Registrar of trademarks or before the Appellate Board (Intellectual Property Appellate Board) for the removal of the trademark from the register or for rectification of the Register of Trademarks. The word ‘Aggrieved persons’ has not been defined anywhere in the Act or Rules, but the Judiciary has interpreted it to mean a person whose substantial interest lies in the removal of the trademark from the register or those persons who would suffer damage if such trademark remains in the register.

However, this application cannot be filed anonymously since the onus of proving the damage from the non-removal of a trademark lies in the affected party. Moreover, the application mandates the name of the party aggrieved to be mentioned in the form(discussed below) for making it a valid application for the purpose of Section 47. This is done to ensure that a random third party who is not even affected by the trademark does not file such an application for ulterior motives. Hence, this ensures the sanctity of the procedure. 

In the case of Wright, Crossley and Company’s Trademark Re, the Court observed that a person is said to be aggrieved when in some way he is damaged or injured if the trademark is allowed to stand and this has to be given a practical approach rather than a fantastic one. 

What is Non-use

With regard to Section 47 of the Act, a non-use of a registered trademark occurs when it is not used for more than a period of 5 years and 3 months, which will make him lose the trademark in rectification proceedings. ‘Use’ of a trademark means that when there is a bona fide intention for the use of the mark in the ordinary course of trade and not only to reserve the right to use the mark. In J. N. Nicholas Ltd. v. Rose and Thistle, it was held that use of a trademark does not necessarily mean a physical sale. Even if the mark has been used for the purpose of advertisement in the said period of 5 years and 3 months, without existing on the goods, such use is valid in the eyes of law. 

Generally, the onus of proof of non-use of the trademark lies on the person who files the rectification application, but it can also be shifted to the owner of the trademark, where it is required to prove that he has actually used this trademark, failing which the mark is liable to be removed from the register. The proof of use and non-use of a mark must be clear and convincing to the Court. “Bonafide use” means use that is honest and genuine and “not pretended”. The substantiality of use judged by ordinary commercial standards, depending upon the nature and circumstances of the case may be relevant to determine whether it was in fact bonafide”.

Under Section 2(2)(c) of the Act, the use of a trademark for goods is different from that for services. For the use in relation to goods, it is construed as the use in physical or any other form of such goods. For services, it is construed for the use of the mark or any part in the performance, availability and provision of the service. In the case of Hermes Societe Anonyme v. B H Ries Limited, the Court observed that the assistant registrar was right in stating that the words ‘in the course of trade’ must be given a wider interpretation to include the steps that are essential for the production and the actual positioning it in the market. In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., the Bench rejected the contention of the petitioner and held that the Act nowhere mentions that the word ‘use’ means actual sales of goods in the market to the public. The respondent had made sales of goods to the limited and restricted market available to him during the statutory period, even though it was sold to privileged persons only. This was held as a valid use of the trademark. Cases like these imply that the Courts have given a broad interpretation of the word ‘use’ with respect to trademarks.

The procedure as per Trademark Rules, 2017

The Trademark Act of 1999 does not give the procedure to be followed while filing an application for the removal of a trademark under Section 47. For this, the Trademark Rules, 2017 (hereinafter referred to as ‘Rules’) are to be noted. Rule 97 of the Rules deals with the application to be filed for the rectification or removal of a registered trademark. This rule sets out the following procedure:

  • An Application in Form TM-O is to be filed with the Registrar for the varying of any entry relating to a trademark or collective trademark.
  • The Application is to be accompanied by a statement that provides the nature of the applicant’s interest, the complete facts and the relief sought by him.
  • If the applicant is not a registered proprietor of the impugned trademark, then the Application along with the statement is required to be left at Trademarks Registry. 
  • If the applicant(s) is/are a registered user(s) then the application and statements are required to be accompanied by as many copies as the number of registered users.
  • The copy of the application and statement is delivered to the registered users and the registered proprietor by the Registrar within one month. This is done after the due verification of the application under Rule 43 (i)(c) of the Rules.

Rule 98 gives the further procedure to be followed after the filing of the application in the prescribed format. The Registered proprietor shall file a counterstatement within 2 months of the receipt of the application from the Registrar. This counterstatement shall consist of the grounds on which the application is contested. If no such counter-statement is made within 3 months of the date of receipt of an application under rule 97, then the applicant can file evidence supporting the application for the rectification of the Register.  

Pursuant to Rule 99, any third party can intervene in the proceedings alleging an interest in the registered trademark and can apply in Form TM- O for the leave to intervene. The Registrar may grant the leave or refuse it after hearing the parties concerned. The order passed by the Registrar is appealable within 90 days to the IPAB, but the order of IPAB is not further appealable. For challenging the order of IPAB, a writ petition shall be filed in the High Court.

The Second Schedule of the Rules contains Form TM- O which deals with the Application for rectification of the Register and the Application for filing of the counter statement. In the Trademark Rules of 2002, these Applications had separate forms, but after the amendment, both of the Forms required for the purpose of Section 47 are dealt in the same form to avoid confusion. The First Schedule of the Rules gives the prescribed fees to be paid upon the filing of the Applications. Entry No.2 of this schedule provides the fees of Form TM- O which is ₹3,000 for physical filing and ₹2,700 for e-filing of the Application. This fee is for a single application of counter-statement, as the case may be.

Landmark judgments

Pfizer Products Inc. v Rajesh Chopra

In Pfizer Products Inc. v. Rajesh Chopra, the challenge was on the proprietary rights of a drug named Geodon that was registered by the plaintiff on 18th July 1996 in India. The defendant stated that they used the trademark ‘Geodon’ since 1st June 2003, but contended that the plaintiff has failed to show the use of the trademark for the past years, making it liable to be removed from the Register as per the provisions of Section 47 of the Trademark Act, 1999. The plaintiff in this case had a global market and succeeded in proving the use of the trademark globally in 40 countries, if not in India. The plaintiff could establish the illegal copying of the global trademark and thus, the Court refused to remove the trademark from the Register. 

Vishnudas Trading as Vishnadas Kishendas v Vazir Sultan Tobacco Co. Limited

In the case of Vishnudas Trading as Vishnadas Kishendas v. Vazir Sultan Tobacco Co. Limited, the applicant filed for limiting the use of the trademark of ‘Charminar’ used for the manufacture of cigarettes. This trademark was also registered in other classes of zarda and quiwam, which were intended to be used by the proprietor, but was never actually used. The Court applied the provision of non-use and held that if a person is trading or manufacturing only one or some goods and have no bona fide intention to actually trade or manufacture some of the goods, but have it registered as a trademark which covers several goods, then such registration is liable to be rectified or removed and only those classes that are actually used by the proprietor shall be valid. 

M/s Pop Foods Products Pvt. Ltd. v M/s Kellogg Co.

In the case of M/s Pop Foods Products Pvt. Ltd. v. M/s Kellogg Co. the appellants contended that they delta in chewing gums and dairy products which is not likely to create any confusion in the minds of the people for the products of the Kellogg Co. that offers breakfast products. The Court ordered the removal of the trademark of Kellogg Company under Section 47 of the Act for non-use of the trademark for a period of 22 years. 

Conclusion

The primary purpose of this law is to protect the bona fide users of trademark from those who are using it with malafide intention. This provision lays down that mere registration and no use of a trademark can land a registered proprietor in trouble. This situation can obviously be avoided by timely renewal of the trademark and ensuring bona fide use of the registered trademark. This mechanism provides a proper defence system against the malicious use of an important asset of a business. However, it is still not very clear as to what extent do courts consider ‘special circumstances in the trade’ making it open to interpretation by many users.

References

https://www.mondaq.com/india/trademark/310546/analytical-approach-rights-of-a-person-to-file-opposition-and-rectification


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