The Trademarks Act, 1999 (“Act”) regulates the matters relating to trademarks in India. Every trademark, for it’s valid and legal use, is to be registered with the Registrar of Trademarks (“Registrar”). Cancellation of trademarks is taking it off the books of the Registrar. So when it needs to be varied or removed or cancelled, it is notified to the Registrar. The Act lays down the procedures, grounds and the manner of cancellation.
1. Who Can Apply For Cancellation Of Trademarks?
- Any person aggrieved by the registration of trademarks may apply to get it cancelled. An aggrieved person is the one who is affected adversely by the trademark.
- 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.
- Under Section 58 of the Act, the registered proprietor can file for cancellation of entry of the trademark from the register.
2. Grounds For Cancellation
Section 47, 50 and 57 of the Act lays down grounds for cancellation. They are:
- Trademark registered with the goods and services is done so without any bonafide or genuine intention to use it.
- Trademark was not in bonafide use for five years from the date of registration, and such period of five years has elapsed.
- A trademark registered is used in such a way which causes deception or confusion to the public.
- The proprietor has misrepresented or failed to disclose any material fact relating to it in the application for registration, which if appropriately disclosed, would not justify such registration.
- Change in the circumstances after registration such that it’s registration is not validate.
- When there is a condition mentioned in the Register of Trademarks, and there is a violation or failure to observe it, any person can file for cancellation of registration.
3. Whom To File For Cancellation?
The application for cancellation is filed to the Registrar of Trademarks or the Appellate Board. Under whose jurisdiction a trademark registration takes place, is the Registrar of Trademarks for submitting the cancellation application. Intellectual Property Appellate Board is the Appellate Board (“Intellectual Property Appellate Board”) for Trademarks in India.
The location of the Boards is at five places in India,i.e. Chennai, Delhi, Mumbai, Kolkata and Ahmedabad. Application for cancellation is either given to the Registrar or Appellate Board.
4. Procedure For Cancellation
On applying for the cancellation to either the Registrar or the Appellate Board, they will issue a notice to the concerned parties, i.e. the proprietor/s of the trademark and the registered user(s). 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.
The Registrar hears both sides and after looking to the evidence of the parties, passes an order. When filing is before the Registrar, and he makes an order of cancellation, he executes it by removing the trademark from his register. The order passed by the Registrar can be appealed to the Appellate Board. If the application is before the Appellate Board directly, they follow the same procedure as that of Civil courts.
Civil court procedure is similar to the one followed by the Registrar of the Trademark. If the Appellate Board passes for cancellation, an intimation is given to the Registrar to cancel the trademark. A writ petition to the High Court can be made against the order of the Appellate Board.
5. Forms For Cancellation
The Trademarks Rules, 2017 provides for forms filed before the Registrar for cancellation. The application is accompanied by these forms for submitting cancellation to the Registrar. The two forms are:
1. Form TM-O: This is the form for removal of a trademark under the grounds mentioned in Section 47 and 57.
2. Form TM – U: This is the form for application for cancellation of entry of a trademark under the grounds specified in Section 50.