Cancellation of a Registered TradeMark in India

Cancellation of a Registered TradeMark in India

What is the cancellation of a trademark?

Trademark cancellation proceedings outline the process for a trademark owner to file a request to cancel a registered trademark. Cancellation of trademarks is taking it off the books of the Registrar. Cancellation of a registered trademark is a legal procedure in which an aggrieved person or party seeks to remove a registered trademark from the registry.

Trademark cancellation proceedings may be on any number of legal bases, including: abandonment, priority, fraud or generality.

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.  Section 47 of the Trademark Act deals with rules of removing trademark.

Who Can Apply For Cancellation Of Trademarks?

  • Any person (aggrieved person) who got affected/damaged by the registration or someone who has a pending trademark for the same mark.
  • A person interested in a trademark can apply for its cancellation. Though any person can apply for it, he can do so only on the grounds mentioned in the Act.
  • The Registrar of Trademarks can also cancel it on his own if the trademarks relating to any goods or services is no longer registered,i.e. when there is no renewal of it after ten years of its registration.

What are the grounds for the cancellation of trademark registration?

Section 47, 50 and 57 of the Act lays down grounds for cancellation. They are:-

  1. If the owner of the trademark registered the mark of identity without the bonafide intention to use it.
  2. Trademark was not in bonafide use for five years from the date of registration, and such period of five years has elapsed.
  3. A trademark registered is used in such a way that causes misrepresentation or disarray to the community.
  4. 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.
  5. Change in the circumstances after registration such that it’s registration is not validate.
  6. 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?

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 removal of a trademark under the grounds mentioned in Section 47 and 57.
  • Form TM – U: This is the form for application for cancellation of entry of a trademark under the grounds specified in Section 50.

What are the Documents required for Cancellation of a trademark registration?

The documents needed for filing a rectification/ cancellation are as follows:-

  • An application is to be created in triplicate on the requisite form.
  • A statement of the case, setting out the nature of the Applicant’s interest, facts upon which the case is based and the relief that is sought.

Procedure for Cancellation of Trademark in India

Various steps to be fulfilled by applicant for Cancellation of Trademark in India are:

Filing a Cancellation Petition before the Registrar of Trade Mark or before the Intellectual Property Appellate Board.

A person aggrieved has the option of filing for a cancellation petition before the Registrar of Trade Mark or before the Intellectual Property Appellate Board. The affected parties file counter statements against the application before the Registrar. An opportunity is given to both parties to defend their sides. Both parties file evidence and hearing of their cases take place.

Grounds of Voluntary cancellation of a Registered Trademark

An accompanying affidavit stating the grounds of voluntary cancellation of a registered trademark is sent along with the application. The affidavit is to be signed and verified by the proprietor.

Decision of the Registrar of trademarks is Appealable before the IPAB

The decision of the Registrar of trademarks is appealable before the IPAB.  The Trade Marks Act does not provide for any appeal against the order of IPAB. However, a writ petition is maintainable before the jurisdictional High Court.

Note: This Post was last updated on April 23, 2021

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Sunita

Founder & Director | COO & CHRO at eTaxFinance | Content Writer at eTaxFinance Blog | Department Head for Intellectual Property & Startup Team | Head-Corporate Strategy and Planning