What if you don’t use your trademark?

Introduction

Trademarks can be phrases, names, symbols, devices (logos), drawings, or any other unique sign or mark that helps customers differentiate one's goods or services from those of others, according to the Trade Marks Act of 1999.

Trademarks serve as source identifiers for a single business's goods or services, as well as an advertising tool for that entity, allowing customers to recognise a product based on its goodwill and consistent quality.
 

The owner of a registered trademark has exclusive rights under the Act once it is registered. However, some duties come with the rights. The owner of a registered trademark is required to utilise the mark and to renew it on a regular basis. If the registered trademark is not used properly, it loses its validity and the proprietor loses its right to enforcement.

How can one lose their trademark?

Trademark owners usually need to keep close watch over their marks in order to make sure the rights are not infringed, diluted, or lost.

You can lose a trademark in a variety of ways.

• You can lose a mark through abandonment. A mark will be considered abandoned if you stop using it for three consecutive years and you have no intent to resume its use.

• You can also lose a mark through improper licensing or improper assignment. Trademarks can also be lost if you license a trademark without specifying adequate control or supervision, or if you assign a trademark to someone else without also selling that person or entity the corresponding assets.

• Some trademarks become generic as time passes. This means that most members of the public think the word means a type of product, rather than a product from a specific manufacturer. Trademarks that become generic in this way are lost due to “genericity.” For example, “aspirin” became generic over time.

Trademarks Act

Once registered, a trademark must be used in trade in a genuinely honest manner in relation to the goods and services for which it has been registered.

Failure to use the trademark can result in its cancellation and abandonment. Non-use is a reason for removing a mark from the register, according to Section 47 of the Trade Marks Act, 1999.

According to the Section, a mark can be removed for one of two reasons:

• The trademark must have been registered without the applicant’s bona fide intent to use it.

• The mark had not been used for at least three months prior to the removal application.

• The mark must have been on the register for at least five years and has not been used prior to applying this section.

Before the registrar removes a registered trademark, the following conditions must be met:

• A person aggrieved has to file the application.

• The proprietor must refrain from using the trademark for at least five years and one month prior to the filing date.

• There will be no exceptional circumstances that impact the proprietor’s trademark use during this time.

If it is discovered after registration that the trade mark has not been used in any of the classes for which it was registered for a period of five years or has not been used for a period of three months prior to the date of filing the application for registration, the mark may be removed from the trademark registry.
 

The date of entry into the Register for the purposes of this section is the date on which the Certificate of Registration was issued.

Case Laws

In certain circumstances, non-use can be justified by a proprietor, wherein it could not use the mark owing to situations that had arisen not due to the fault of its own. Such circumstances include force majeure and import-export restrictions.

In M J Exports Pvt. Ltd Bombay vs. Sunkist Growers, it was held that non-use due to special circumstances such as import policy, import control and tariff duty of the Government of India, outside the control of the proprietor would not attract cancellation for non-use.

In Kabushiki Kaisha Toshiba vs. TOSIBA Appliances, the Supreme Court held that, “The intention to use a trade mark sought to be registered must be genuine and real… when a trademark is registered, it confers a valuable right. It seeks to distinguish the goods made by one person from those made by another person.

Therefore, a person who does not have any bona fide intention to use the trademark is not expected to register in all different classes just to block the trademark”.

In Vishnudas Kishandas v. Vazir Sultan Tobacco Co. Ltd., Hyderabad and Ors., famously known as the Charminar Case, it was laid down that, “a trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification.”

Indian trademark law allows for the cancellation of a trademark registration if there has been no bona fide use of the trademark for the goods/services covered by the registration for a continuous period of five years and three months from the date on which the mark was entered into the Trade Marks Register.

Conclusion

However, it has been abundantly apparent throughout that simple usage to protect rights in a mark would not be sufficient to avoid a cancellation action.

As a result, commercial usage of the mark on or in relation to the goods/services must be considerable. Given this, even a single instance of commercial and bona fide use in India throughout the relevant period is enough to defeat a cancellation case.

written by:

Rupam Banerjee.