Who Can Apply for Trademark Cancellation?

Any individual or entity affected by a Trademark Registration has the right to apply for its cancellation. This includes:

• Aggrieved Persons: Those who suffer due to the existence of the trademark.
• Interested Parties: Individuals or businesses that have a vested interest in the trademark’s validity.
• Registrar of Trademarks: The Registrar can initiate cancellation if a trademark is not renewed after its initial ten-year registration period.
• Registered Proprietors: Under Section 58 of the Act, the trademark owner can also file for cancellation.

Grounds for Trademark Cancellation

The Trademarks Act specifies several grounds for cancellation under Sections 47, 50, and 57:

1. Lack of Bona Fide Intent: The trademark was registered without a genuine intention to use it for the specified goods or services.
2. Non-Use: The trademark has not been used in a bona fide manner for five years post-registration.
3. Deceptive Use: The way the trademark is used may lead to confusion or deception among the public.
4. Material Misrepresentation: If the trademark registration involved the misrepresentation or omission of crucial information, the trademark can be canceled.
5. Change in Circumstances: If circumstances change post-registration that invalidate the trademark, it can be canceled.
6. Violation of Conditions: If any conditions attached to the trademark registration are violated, cancellation can be pursued.

Documents Required to Cancel a Registered Trademark in India

To cancel a registered trademark under the Indian Trademarks Act, 1999, you will need the following documents:

• Application for Cancellation: This is the main form you file with the Intellectual Property Appellate Board (IPAB), including your name, address, and reasons for cancellation.
• Supporting Evidence: Provide proof to support your application, which can include documents, affidavits, or other relevant materials.
• Power of Attorney: If you are using a lawyer, include a Power of Attorney that allows them to represent you.
• Proof of Payment: Attach a receipt or evidence of payment for the required filing fee.
• Trademark Registration Certificate: Include a copy of the trademark registration document to confirm its status.

Filing for Trademark Cancellation

Where to File?

Applications for trademark cancellation can be submitted to either the Registrar of Trademarks or the Intellectual Property Appellate Board (IPAB). The Registrar oversees the cancellation process, while the IPAB serves as the appellate authority for disputes arising from trademark registration.

Procedure for Cancellation

The trademark cancellation process typically follows these steps:

1. Filing the Application: Submit the cancellation application to the appropriate authority.
2. Notice Issuance: Upon receiving the application, a notice is sent to the trademark proprietor and any registered users.
3. Counter Statements: The concerned parties can file counter statements in response to the cancellation application.
4. Evidence Submission: Both sides present evidence to support their claims during the hearing.
5. Order Issuance: The Registrar or IPAB reviews the evidence and issues a decision. If cancellation is granted, the trademark is removed from the register.
6. Appeal Process: Decisions made by the Registrar can be appealed to the IPAB, which follows a civil court-like procedure.

Necessary Forms for Cancellation

The Trademarks Rules, 2017 specify certain forms for filing cancellation applications:

• Form TM-O: This form is used for removal of a trademark based on the grounds specified in Sections 47 and 57.
• Form TM-U: This is the form for applying for cancellation under the grounds outlined in Section 50.