Can Trademark Usage Rights Be Revoked from an Assignee or Registered User?

A question that often arises is whether the trademark usage rights transferred by way of trademark assignment or licensing can be discontinued or if a registered user’s authorization can be cancelled. Trademark rights once assigned are not easily revoked. However, under certain circumstances, it is possible for the original trademark owner to reclaim these rights or cancel a registered user’s authorization. In this article, we will be discussing the concept of trademark assignment and registered user/assignee, the conditions under which a trademark assignment can be varied or cancelled, its process and implications.

What is Trademark Assignment?

Trademark assignment refers to the transfer of ownership rights, title, and interest associated with a trademark. Such transfer of ownership can be for the entire trademark or a part of it, with or without goodwill.  The registered (original) proprietor transferring the ownership of trademark is called the ‘assignor,’ while the new proprietor who receives the rights is called the ‘assignee.’ There are several reasons why a situation might arise necessitating the cancellation of registration of a registered user in a trademark assignment.

Who can file for such variation or cancellation of a registered user's trademark rights?

Aggrieved Parties:- Any aggrieved party by the registration of a registered user can make the application in writing to the Trademark Registry in prescribed manner for variation or  cancellation process. This could be another entity or competitor who believes the trademark infringes on their rights or a consumer who feels the trademark is misleading.

The Trademark Registrar:- The Registrar has the authority to vary or cancel registration of a registered user on their own motion, if the trademark relating to any goods or services is no longer registered, i.e. the proprietor has not applied for renewal of the trademark.

By the Registered Proprietor or Users: The registered proprietor, the registered user in question, or any other registered user of the trademark can apply for any variation or cancellation.

Grounds for variation or cancellation of registration as registered user

There are multiple grounds for cancellation, which can be initiated by different parties. Some of them are as follows:-

• Unauthorized Use of the Trademark:- The registered user may have their rights cancelled if they use the trademark in a way  that is inconsistent with the agreed terms and conditions of the trademark assignment.  This may include using the mark on unauthorized products or services, or using it in a manner that causes or is likely to cause deception or confusion among consumers.

• Conflicting Contractual Rights:- If the registration infringes on the rights of another party granted by contract, then that other party may request the cancellation of the registration. This is to protect individuals who might possess some contractual interests related to the trademark.

• Misrepresentation or Non-disclosure:- If for instance, the proprietor or the registered user made false statements, or concealed any relevant information when filling the application, then this is could also be the reason for cancellation. Concealment of the fact should be material to the application for registration which if accurately represented or disclosed would not have justified the registration of the registered user.

• Trademark No Longer Registered:- If the trademark itself is no longer registered or has not been renewed periodically for the goods or services, the registered user's rights can be cancelled.

• Change of Circumstances: The circumstances have changed since the date of registration in such a way that at the date of such application for cancellation they would not have justified registration of the registered user.

• Quality Issues: The Registrar has the authority, on his own motion or on the application in writing by any aggrieved person, to cancel the registration if conditions relating to quality of goods or services related with the trademark are not being complied with.
  

Procedure for Cancellation of Registration of Registered User:

• File the Application:- An application to cancel the registration of a registered user must be submitted using Form TM-U, along with the prescribed fees, i.e., INR 5000 for Manual filing and INR 4500 for E-filing.

• Notice to Registered Proprietor and Registered User/s:- The Registrar will notify the registered proprietor and all registered users of the trademark about the application.

• Intervention Process:- Any notified person intending to intervene must inform the Registrar within one month using Form TM-U, including their reasons for intervention. The Registrar will share this information with all involved parties.

• Evidence Submission:- The applicant and notified persons can submit evidence to support their case within the specified timeframe.

• Hearing:- The Registrar will allow all parties to present their case. After considering the evidence and arguments, the Registrar will decide to accept, refuse, or accept the application with conditions.

• Communication of Decision:- The Registrar will communicate the decision to all the parties of any cancellations or removals in writing.

As we know that trademark assignments can be either for the entire trademark or a part of it, if the trademark is transferred in the absolute manner, then the process of cancellation of registration of registered user gets a little more complicated than expected. Thus, whether the trademark usage rights can be withdrawn or the authorisation granted to the assignee can be cancelled is not in doubt. However, the process could be a little complicated, several factors have to be considered while filing of such applications or defending one, and should be done with professional legal advice. 

At Compliance Calendar LLP, our approach is to help businesses in protecting their brand name/logo/design and ease the process of cancelling the registration of a registered user for trademarks end-to-end for them. Our team of experienced Trademark Attorneys and IP Experts is dedicated to guiding you through every step of this cancellation procedure. Our team is well-versed in handling various scenarios, including automatic cancellations for time-limited registrations and the removal of specific goods or services from trademark registrations.

Our goal is to protect your intellectual property rights and achieve the best possible outcome for your business. For expert assistance with trademark cancellation matters, contact us at info@ccoffice.in or WhatsApp/Call at 9988424211.

Frequently Asked Questions

1. What is a trademark assignment?

A trademark assignment is a legal process where the owner of a trademark (the assignor) transfers their rights, title, and interest in the trademark to another party (the assignee). This transfer can be for the entire trademark or just a part of it, and it may or may not include the associated goodwill.

2. Can a trademark assignment be cancelled?

While trademark assignments themselves are not easily revoked once completed, the rights granted to a registered user through an assignment can be cancelled under certain circumstances. This process is known as cancellation of registration of a registered user. 

3. Who can apply for cancellation of a registered user's rights?

Several parties can request for the cancellation process such as any person aggrieved by the registration of a registered user, the Trademark Registrar, the registered proprietor of the trademark/registered user.

4. How much does it cost to file for cancellation of a registered user?

The current fees for filing a cancellation application are INR 5000 for manual filing and INR 4500 for e-filing. 

5.Can a registered user contest the cancellation of their rights?

Yes, a registered user has the right to contest the cancellation of their rights. They will be notified of the cancellation application and given an opportunity to present their case during the hearing. They can submit evidence and arguments to support their continued registration as a user of the trademark.

6.What is the role of goodwill in trademark assignments?

Goodwill is the reputation and recognition associated with a trademark. In trademark assignments, the transfer of goodwill is often crucial. An assignment "with goodwill" means the assignee gets the benefit of the trademark's established reputation. An assignment "without goodwill" might be more limited in scope and could impact the validity of the assignment in some jurisdictions.

7. Can a trademark owner cancel all registered users if they decide to use the trademark exclusively?

If a trademark proprietor decides to use the trademark exclusively, they may seek to cancel the rights of registered users. However, this would depend on the terms of the assignment agreements. It is always advisable to consult with a trademark attorney in such situations to understand the implications and best course of action.

8. How can Compliance Calendar help?

At Compliance Calendar LLP, our approach is to help businesses in protecting their brand name/logo/design and ease the process of cancelling the registration of a registered user for trademarks end-to-end for them. Our team of experienced Trademark Attorneys and IP Experts is dedicated to guiding you through every step of this cancellation procedure. Our team is well-versed in handling various scenarios, including automatic cancellations for time-limited registrations and the removal of specific goods or services from trademark registrations.

Our goal is to protect your intellectual property rights and achieve the best possible outcome for your business.