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FAQs on Rectification or Cancellation of Trademark

FAQs on Rectification or Cancellation of Trademark

FAQs on Rectification or Cancellation of Registered Trademark :

1. Are rectification/cancellation procedures accessible under Indian law? If yes, what are the reasons on which such a petition can be filed?

Yes, under the Trademarks Act an application can be filed for the rectification or cancellation of Trademark. Following are the grounds for filing rectification or cancellation:

(i) The mark was not distinctive at the time of its registration.

(ii) The mark conflicts with an already existing mark.

(iii) The use of the mark is likely to cause confusion and deception amongst trade and public.

(iv) There is no bona fide intention to use the mark.

(v) There has been no use of the mark for a period of 5 years.

2. What is the cancellation of a Trademark?

Cancellation of a trademark is a procedure in which an applicant pursues to remove a registered trademark from the record. This can be done:

-If it is shown that the trademark was enumerated without any bona fide meaning of use by the owner.

-If the registered trademark hasn’t been used for a nonstop period of 5 years from the date of registration of the trademark.

3. Who can initiate rectification/cancellation proceedings?

Only a ‘person aggrieved’ (any party whose trading interests are affected by the presence of the registration on the register) can initiate the rectification/cancellation proceedings.

4. Out of the five (5) Trademarks Registries in India where can I file rectification/ cancellation proceedings?

There are five offices of Trademark situated at Ahmedabad, Chennai, Delhi, Kolkata or Mumbai. Thus, Rectification/cancellation applications can only be filed at the Trademark Registry where the trademark was originally filed for attaining its registration.

5. What is the procedure followed by the TMR for cancellation/rectification proceedings?

The Registrar on receipt of the application for rectification, official fees and statement of the case serves the application and the statement of the case upon the Registered Proprietor calling upon it to file a Counter-Statement. Once the Counter-Statement is filed, the matter reaches the evidence stage and the parties are required to file their respective evidence in the form of affidavits deposed by their concerned authorized officers. Succeeding to both the parties have filed their respective proofs, the problem is set down for a final inquiry giving both parties a chance to make oral submissions on merits and the order is made in due course.

6. Is the Order passed by the Registrar appealable?

Yes, the Direction from the Registrar is appealable before the Intellectual Property Appellate Board (IPAB). Appeals can be filed within three months from the date of such demand is conversed.

7. Can I file the cancellation/rectification action before the Intellectual Property Appellate Board?

Yes, the rectification application can be filed before the Intellectual Property Appellate Board office at Chennai. Once the pleadings are completed a hearing is appointed before the Intellectual Property Appellate Board.

8. What is the procedure followed by the Intellectual Property Appellate Board for cancellation/rectification proceedings?

In withdrawal proceedings before the IPAB, the party filing the application for rectification is required to submit its report of a case and proof along with its request. On being served, the registered applicant is also required to submit its proof along with its counter-affidavit. Afterward, the IPAB appoints a hearing for oral submissions and the order is accordingly issued.

9. Is an order of Intellectual Property Appellate Board appealable?

There is no provision for appeal against an order of the Intellectual Property Appellate Board. However, a writ petition under Article 226 and 227 of the Constitution of India can be filed in the High Court against the order of the Intellectual Property Appellate Board. A writ is in the nature of a review and is not an appeal. A distressed applicant can also appeal to the jurisdiction of the Supreme Court of India under Article 136 of the Constitution of India.

10. When is a particular trademark registration vulnerable to cancellation on the ground of non-use?

A particular trademark becomes susceptible to cancellation on the ground of non-use as soon as a nonstop period of five years or more have gone from the date on which the said mark was actually registered. In other words, the five years non-use period is to be calculated from the sealing date or the date on which registration certificate was issued.

11. To defend a non-use cancellation action, is the quantum of use made by the trademark in question pertinent?

Indian law does not prescribe any specific quantum of use vis a vis trademarks to defend a non-use cancellation action. It has been acknowledged that even a token sale of a particular product bearing the mark is adequate to ward-off non-use withdrawal proceedings.

12. Are there any special circumstances that can be pleaded to defend a non-use cancellation action?

Yes, the courts in India have acknowledged certain special circumstances given below which assist in defending a non-use cancelation action.

1. A general glut in the market.

2. Lack of demand for the goods.

3. Import restrictions.

4. War time restrictions.

Wrap up

The grounds for filing an application for trademark rectification or cancellation are already mentioned above. If any individual is distressed by an entry incorrectly made or mistakenly remaining on the trademark register, he is allowed to file an appeal for cancellation of registration or rectification of the register for the deletion of the trademark registered. Rectification of the trademark records is a proceeding in which a party seeks to eliminate a registered trademark from the records.

Communication details: Email Id and Phone Number 9540026175.

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12 Jun

NeuSource Startup
Akash Rai

"Any time is a good time to start a company.” Neusource indulge in providing business consultancy services which help startups to accomplish their desired results as a TAJ EXPRESS. If you’re passionate about something and you work hard, then neusource is the right choice for you.

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