This article is written by Dhruv Shah, pursuing a Diploma in Intellectual Property, Media, and Entertainment Laws from LawSikho.
‘PS5 Trademark in India is Owned by a Delhi Guy, Sony Could Delay the Launch’ When this headline came News and Meme pages had a blast and the whole internet had fun at Sony’s expense. But looking at it from an intellectual property POV it sounded costly as this meant Sony could not launch the gaming console in India. Such a big Japanese multinational conglomerate could not even announce the pricing and availability of the PS5 due to a single person, not even a corporation. This led to the crucial question of whether a trademark registration can be canceled due to various reasons? What are the grounds? Who can file a petition for cancellation? Which forms to be submitted for cancellation? Let us discuss and try to answer all of the above questions throwing insight into the whole procedure regarding trademark cancellation.
What is the cancellation of a trademark?
Any in-depth analysis starts with the most basic information. Cancellation of a registered trademark is a legal procedure in which an aggrieved person or party seeks to get rid of a registered trademark from the registry. For any and every trademark to be valid and considered legal for use has to be registered with the Registrar of Trademarks. Cancellation of a trademark is like taking it off the books of the Registrar. So when it needs to be changed or removed or canceled, it is to be notified to the Registrar. Any dissatisfied person can file a petition in a prescribed manner seeking rectification or cancellation of the mark before the Trademark Registry Office or Intellectual Property Appellate Board (IPAB). The procedures, grounds, and the manner of cancellation have been inscribed in the Trademarks Act, 1999 the supreme law which governs all trademark-related matters in India.
Why would the need to cancel a trademark would arise you ask? The two major issues could be i) if one registered the trademark without any desire of actually using it, or ii) The registered trademark is not in use for 3 months before the date of application of registration or not periodically using for 5 years from the exact date of registration.
The time period of Trademark registration in India
Trademark registration is a tedious process, and it takes around 18-24 months to obtain registration in case no opposition is filed by a third party. In the scenario of cancellation of the same, the concerned party can call for canceling the trademark either within 5 years of trademark registration or subsequent 5 years of registration. To simplify it the time period for trademark cancellation if to be implemented within 5 years can be done if it:
- Creates disarray within Business
- Too many descriptions
- If the applicant doesn’t guard it for at least 3 years
- Is misleading the public
Likewise, the time period for trademark cancellation can be utilized after the tenure of 5 years if:
- The mark has become too vague
- If the proprietor registered it with deceitful means
- The trademark contains indecent things
- It is derogatory in nature.
Can you voluntarily cancel trademark registration?
Yes. Subject to fulfillment any of the conditions below :
- If you are a person wronged by the registration of trademarks may enforce to get it canceled.
- If you are a person with an exquisite interest in a trademark can apply for its termination. Though any person can apply for it, he can do so only on the grounds stated in the Act.
- The Registrar of Trademarks can also invalidate it on his own if the trademarks relating to any goods or services are no longer documented, i.e. when there is no revival of it after ten years of its registration.
- Under Section 58 of the Act, the registered proprietor can register for cancellation of entry of the trademark from the register.
What are the grounds for the cancellation of trademark registration?
The grounds for cancellation and rectification have been stated in sections 47, 50, and 57 of the Act. This is the part where usually readers may stop reading to avoid lengthy rules so to simplify it further the following are the grounds for cancellation of trademark:
- Trademark registered with the goods and services is done so without any bonafide intention to use it.
- Trademark was not in genuine use for five years from the date of registration, and such a period of five years has transpired.
- A trademark registered is used in such a way that causes misrepresentation or disarray to the community.
- The proprietor has misrepresented or unsuccessfully attempted to divulge any material fact relating to it in the application for registration, which if fittingly disclosed, would not justify such registration.
- When there is a precondition mentioned in the Register of Trademarks which has been lacked to observe any person can file for cancellation of registration.
What are the forms for the cancellation of trademark registration?
Now that you know why and how you can get a trademark registration canceled your fingers may be itching to file one so to assist in the lengthy task here are some of the forms required to be filed before the trademarks registry given under the Trademarks Rules, 2017. The application for cancellation or rectification is paired with these forms which are then to be submitted to the Registrar:
- Form TM – O: This is the form for Appeals filed for canceling the trademark that breached the provisions provided under the Geographical Indication of Goods (Regulation and Protection) Act, 1999.
- Form TM – U: This is the form for an Appeal filed for canceling the trademark registration. The registered owner is tackling the registered trademark file for cancellation. The officials execute the cancellation according to the laws under Section 50 of the Trademark Act.
- Form TM – P: Request form filed for correction or modification in the register of the Trademark Registrar connected to the cancellation of the trademark or the cancellation of the listed proprietor.
That’s it! On applying for the cancellation to either the Registrar or the Appellate Board, they will issue a notice to the interested parties. The Registrar will then hear both the parties and after looking at the proofs of the parties and pass an order. When filing is before the Registrar, and he makes a decree of cancellation, he fulfills it by removing the trademark from his register. The order approved by the Registrar can be appealed to the Appellate Board. If the application is before the Appellate Board straightaway, they follow the same routine as that of Civil courts. The civil court process is similar to the one followed by the Registrar of the Trademark.
Global perspective (USA)
The USPTO is primarily involved with the maintenance and protection of the trademark rights of deserving owners. However, if the USPTO believes that a present owner of a trademark doesn’t possess the appropriate rights to the trademark, it will strip the applicant of the mark. If a junior applicant believes that a senior, existing applicant is prejudicially affecting and/or preventing its mark from registering, the junior applicant can file a Petition for Cancellation before the United States Trademark Trial and Appeal Board (TTAB). The mechanics for filing a Petition to Cancel may be found in the Trademark Trial and Appeal Board Manual of Procedure (TTAB). Simply, to file a Petition to Cancel with the TTAB, one has to declare his involvement in the case, the reasons behind the action of the case (why the mark deserves to be canceled), and to compensate the mandatory costs.
The most essential aspect here is to remember that a registered trademark is available for cancellation on the application of a person aggrieved if the mark has been wrongfully registered or wrongly remaining on the trademark register. The individual aggrieved is obligated to show that the mark was registered in infringement of the Trade Mark Act or any other law. Additionally, the applicant can testify that a mark though validly registered has for the alteration in circumstances become terrible and liable to be rectified or terminated. The decision of the Registrar of TradeMarks is certainly appeasable before the IPAB. It is likely to take years for a trademark application to be official. However, it doesn’t take any for a person to apply for the cancellation of the trademark. This is only when the person applying for the cancellation is affected by the trademark. There is also an alternative to rectify. Rectification is a legitimate legal procedure to make a correction or rectify an error that has been made while registration of the trademark in question.
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