Trademark Cancellation in India: A Complete Guide

Trademark Cancellation in India is a crucial aspect of trademark law, governed primarily by the Trademarks Act, 1999. This legal process allows for the removal of a registered trademark from the official register under specific circumstances. While Trademark Registration offers exclusive rights and protection to the owner, cancellation becomes necessary when certain grounds outlined in the law are met. Understanding the complex sides of trademark cancellation is essential for both trademark owners and individuals or entities seeking to challenge the validity of a registered trademark.

Grounds for Trademark Cancellation in Indian Law

There are several grounds on which a registered trademark can be subject to cancellation. Here are the key grounds for trademark cancellation in India:

• Non-use: If a trademark has not been used continuously for a period of five years or more, it may be subject to cancellation. Non-use of a trademark undermines its purpose as a symbol of trade origin and can lead to its removal from the register.

• Abandonment: If the owner of a trademark has abandoned its use or allowed generic trademark, the trademark may be cancelled. Abandonment occurs when the owner ceases to use the trademark without any intention of resuming its use or protecting its distinctiveness.

• Invalidity: A trademark may be cancelled if it was registered in violation of any provision of the Trademarks Act. This includes situations where the trademark is deceptive, similar to an existing trademark, or lacks distinctiveness.

• Fraud or misrepresentation: If a trademark was registered through fraudulent means or with false claims of ownership, it may be subject to cancellation. Fraudulent registration undermines the integrity of the trademark registration process and system and can result in the cancellation of the trademark.

• Public interest: Trademarks that are contrary to public interest, such as those that are scandalous or obscene, may be cancelled. Public interest considerations are important in trademark law to ensure that trademarks do not offend societal norms or values.

• Genericness: If a trademark has become the common name for a particular product or service, it may be subject to cancellation. Generic trademarks are not eligible for protection as they do not serve as indicators of trade origin.

• Similarity to a well-known mark: Trademarks that are identical or similar to a well-known trademark and are likely to cause confusion or deception may be subject to cancellation. Protecting the rights of well-known trademarks is essential to prevent consumer confusion and maintain market integrity.

It is essential for trademark owners to actively use and protect their trademarks to prevent them from being subject to cancellation on these grounds.

The Complete Guide to Cancelling a Trademark in India

To cancel a trademark in India, the legal provisions and procedures are outlined in the Trademarks Act, 1999, along with the Trademark Rules, 2017. 

Legal Provisions:

• Section 58 of the Trademarks Act, 1999, grants the authority to any person aggrieved by the registration of a trademark to file for its cancellation.

• Section 47 of the Act specifies grounds for cancellation, including non-use and wrongful registration without bona fide intention.

• Section 57 provides additional grounds for cancellation, such as contravention of conditions, errors in registration, or entries made without sufficient cause.

Forms and Documents:

• Application for Cancellation: Form TM-O needs to be filed for cancellation of a registered trademark before the trademark registry. 

• Power of Attorney: A duly executed power of attorney authorising the attorney to represent the applicant in the cancellation proceedings.

• Evidence: Documents and affidavits supporting the grounds for cancellation, such as evidence of non-use, abandonment, fraud, or similarity to a well-known mark.

• Proof of Payment: Receipt or proof of payment of the prescribed fee for filing the cancellation application.

• Trademark Registration Certificate: A copy of the trademark registration certificate for the trademark being challenged.

Procedure:

• Filing the Application: Complete Form TM-O and submit it along with the required documents to the trademark registry

• Service of Notice: Serve notice of the cancellation proceedings to the trademark owner, providing them with an opportunity to respond.

• Evidence Submission: Present evidence supporting the grounds for cancellation during the hearing or trial.

• Attend Hearing: Attend any scheduled hearings or trials and present arguments and evidence in support of the cancellation application.

• Await Decision: Following the proceedings, await the decision.If the trademark is cancelled, it will be trademark status removed from the register.

Fee Structure:

• The fee for filing a cancellation application varies depending on whether it is filed physically or electronically. As per the Trademark Rules, 2017, the fee for physical filing is 5000, while for e-filing, it is 4500.

By adhering to these legal provisions, completing the required forms, and following the prescribed procedure, individuals or entities can effectively pursue the cancellation of a trademark in India. It's advisable to seek professional legal assistance from trademark attorneys to ensure compliance with all legal requirements and maximise the chances of success in the cancellation proceedings.

Post-Cancellation Effects on Trademark Rights in India

The cancellation of a trademark in India has significant implications for the rights associated with the trademark. Here are the post-cancellation effects on trademark rights:

Loss of Protection: Once a trademark is cancelled, it loses its legal Trademark Registration. This means that the owner no longer has exclusive rights to use the trademark in connection with the goods or services for which it was registered.

Inability to Enforce Rights: Following cancellation, the trademark owner cannot enforce any rights associated with the cancelled trademark against third parties. This includes the ability to prevent others from using similar marks in a manner that could cause confusion among consumers.

Removal from Register: The cancelled trademark is officially removed from the register maintained by the Trademarks Registry in India. This ensures that the register accurately reflects the current status of trademarks and prevents confusion among stakeholders.

Potential for Re-registration: While the cancelled trademark itself cannot be re-registered, the owner may have the option to reapply for registration of a similar or identical trademark, provided it meets the requirements for registration under the Trademarks Act, 1999.

Impact on Licensing Agreements: The cancellation of a trademark may affect any existing licensing agreements or contracts related to the trademark. Parties to such agreements may need to renegotiate terms or seek alternative arrangements following cancellation.

Market Implications: The cancellation of a trademark can have implications for the brand's reputation and market presence. It may lead to confusion among consumers and could impact the brand's ability to distinguish its products or services in the marketplace.

Overall, the cancellation of a trademark in India significantly diminishes the rights and protections associated with the trademark. It is essential for trademark owners to actively maintain and protect their trademarks to avoid cancellation and preserve their rights in the marketplace.

HOW CAN COMPLIANCE CALENDAR HELP? 

Compliance Calendar LLP, a specialised firm of trademark attorneys, offers a range of services to assist individuals and businesses in trademark cancellation. With our extensive legal expertise and experience in trademark law, Compliance Calendar LLP provides invaluable assistance at every stage of the cancellation process. From assessing the grounds for cancellation to preparing and filing the necessary documentation, their attorneys ensure that clients' interests are effectively represented. Compliance Calendar LLP develops strategic approaches tailored to each client's specific needs, guiding them through the legal requirements and deadlines involved in the cancellation proceedings. Throughout the process, the firm ensures compliance with all procedural requirements, advocating for clients' rights and objectives. In the event of appeals or further legal proceedings, Compliance Calendar LLP continues to provide comprehensive representation, ensuring that clients receive the best possible outcome. With our dedication to excellence and commitment to client satisfaction, Compliance Calendar LLP is a trusted partner for individuals and businesses seeking to cancel trademarks in India.

Frequently Asked Questions 

• Can I cancel someone else's trademark if I believe it's similar to mine and causing confusion in the market?

Yes, under certain circumstances, you may be able to initiate cancellation proceedings against a trademark that you believe is causing confusion with your own. However, you would need to provide evidence to support your claim, and the decision ultimately rests with the trademark authorities.

• If I cancel a trademark, can I reapply for it later under my ownership?

While you cannot re-register the cancelled trademark itself, you may have the option to reapply for a similar or identical trademark, provided it meets the requirements for registration under the Trademarks Act, 1999.

• What happens if the trademark owner doesn't respond to the notice of cancellation proceedings?

If the trademark owner fails to respond to the notice within the specified timeframe, the cancellation proceedings may proceed in their absence. However, the decision will still be based on the evidence presented by the applicant seeking cancellation.

• Is it possible to cancel a trademark based on its similarity to a well-known mark, even if there is no evidence of confusion among consumers?

Yes, trademarks that are identical or similar to a well-known mark and are likely to cause confusion or deception may be subject to cancellation, regardless of whether actual confusion has been demonstrated. This is to protect the rights of well-known trademarks and prevent potential confusion in the marketplace.

• What happens to any licensing agreements associated with the cancelled trademark?

The cancellation of a trademark may impact existing licensing agreements or contracts related to the trademark. Parties to such agreements may need to renegotiate terms or seek alternative arrangements following cancellation, as the cancelled trademark loses its legal protection and enforceability.

• If I cancel a trademark, can I prevent others from using it in the future?

While cancelling a trademark removes its legal protection, it does not necessarily prevent others from using it in the future. However, you may be able to take legal action against any subsequent use of the cancelled trademark if it infringes on your rights or causes confusion in the marketplace.