A trademark is any distinctive mark or emblem that helps differentiate one good or service from another provided by a rival. A trademark owner receives certain rights to use the mark often as well as maintenance requirements to ensure ownership preservation after registration under the Trademark Act.
Regular usage and renewal are necessary for a trademark to remain in possession; otherwise, the owner may lose the right to use and enforce the trademark. In addition, trademark regulations allow for trademark removal if the owner or proprietor abandons the mark for any reason other than misuse or non-use.
The Value of Using Trademarks
A trademark can only be valid if it is actively used in trade, in accordance with international trademark regulations. Its continued uniqueness and relevance in the market are evidenced by the fact that it is a trademark. For brand owners, not using a registered trademark can have serious repercussions.
The Trademark’s Validity
A trademark in India is valid for ten years from the date of the trademark registration. If a trademark owner does not use their brand for more than 63 months, they may lose their rights to it in rectification or oppositional methods.
Non-Use Cancellation
Following registration, a trademark must be used in commerce honestly with regard to the products and services for which it has been registered. Termination and abandonment of the trademark may occur from non-use. In accordance with the Trade Marks Act, 1999, Section 47, non-use is a basis for withdrawing a mark from the register.
A mark may be removed for one of two reasons under the Section:
- It is necessary that the trademark be registered without the applicant’s genuine intention to use it. Before the removal request, the mark had not been used for at least three months.
- Before this provision is applied, the mark must have been registered for at least five years and not put to use.
The requirements listed below must be met before the registrar cancels a registered trademark:
- The person who feels wronged must submit the application.
- Before the filing date, the owner of the trademark must stop using it for at least five years and one month.
- During this period, there won’t occur any noteworthy occurrences that affect the proprietor’s use of the trademark.
The burden of proving the first two rests with the applicant, and ensuring the third falls on the proprietor.
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Registration Without a Bonafide Intent to Use
It is customary to apply for registration in all or some classes, even if they are not relevant. We call this defensive registration. In order to stop others from registering the trademark, a trademark owner who has no real intention of using it in some classes continues to register it in all or some classes.
This kind of registration may be canceled in accordance with Section 47 of the Act.
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Non-Use for Five Years and Three Months
After five years of registration, presume that the brand has not been used in the registered class. Registration is such if it is found that it has not been used within three months of the filing date. It is possible to remove a trademark from trademark registration. The date the registration certificate was issued is the registration date for this part in the register.
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An Exception in Certain Specific Situations
The owner may be excused from using the mark in some situations if there are reasons outside of their control that prevent them from using it. Both import/export limitations and supernatural interventions fall under this category.
Case Laws
In certain circumstances, non-use can be justified by a proprietor, wherein it could not use the mark owing to situations that had arisen not due to fault of its own. Such circumstances include force majeure and import-export restrictions.
In M J Exports Pvt. Ltd Bombay vs. Sunkist Growers, it was held that non-use due to special circumstances such as import policy, import control and tariff duty of the Government of India, outside the control of the proprietor would not attract cancellation for non-use.
In Kabushiki Kaisha Toshiba vs. TOSIBA Appliances, the Supreme Court held that “The intention to use a trademark sought to be registered must be genuine and real. When a trademark is registered, it confers a valuable right. It seeks to distinguish the goods made by one person from those made by another person.
Therefore, a person who does not have any bona fide intention to use the trademark is not expected to register in all different classes just to block the trademark”.
Indian trademark law allows for the cancellation of a trademark registration if there has been no bona fide use of the trademark for the goods/services covered by the registration for a continuous period of five years and three months from the date on which the mark was entered into the Trade Marks Register.
Is Using My Trademark Necessary?
Using a trademark is a crucial component of registering one. A registered trademark that you have owned for more than five years may be deleted if you haven’t utilized it in the previous three years. The removal of your trademark from the trademark registry is something that other parties may ask to have done. You thus run the danger of losing your trademark if you do not use it. The idea of this approach is to prevent people from collecting trademarks they never use.
If I Don’t Use My Trademark, Should I Still Keep It?
It is against your best interests to preserve your trademark if you have no use for it because of the necessity to utilize it. The requirement to renew your trademark every ten years is a drawback of trademark protection. You will also need to pay renewal costs for this process. Renewal costs will be a waste of money if you do not use your trademark and as a result gain no economic benefit from it.
Techniques for Maintaining Trademark Credibility
- Save Usage Documents: Every usage of a trademark in a firm, including sales data, marketing materials, and product and advertising examples, should be meticulously documented.
- Utilize Brand Extension Strategies: Look into fresh product lines or marketplaces to enter to ensure your brand stays well-known and relevant.
- Analyze Your Competitors: Even when the mark is not being used, remain on the lookout for potential infringers and take swift action to safeguard your trademark rights.
- Seek Professional Advice: Trademark experts can help you with issues unrelated to usage and safeguard the legality of trademarks. What Is Considered Use of a Trademark? Trademark utilization is the ability to manage how your mark is used. This suggests that even in situations where you aren’t using your trademark, you can still keep ownership of it. You will be able to maintain your trademark even if you aren’t using it yourself if you follow the procedure.
For instance, you are entitled to commercialize a trademark as its owner, including through a license contract. Trademark licensing is the process by which a trademark owner (the licensor) allows a third party (the licensee) to use their brand within designated limits. In most franchise agreements, access to the franchisor’s intellectual property (IP) is contingent upon the franchisee paying a royalty charge.
Conclusion
However, it has been abundantly apparent throughout that simple usage to protect rights in a mark would not be sufficient to avoid a cancellation action. Therefore, commercial usage of the mark on or in relation to the goods/services must be considerable. Given this, even a single instance of commercial and bona fide use in India throughout the relevant period is enough to defeat a cancellation case.
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