Cancellation of Registration – Trademark Registration in Cochin
This Article corresponds to section 52 of the former Act of 1958 and empowers the Registrar to vary or Cancellation the registration as registered user.
Procedure for variation of entry in the register
The registered proprietor may make an application on Form TM-U for the variation of the registration of the registered user under clause (a) sub-section (1) of section 50. The application must be accompanied by a statement in triplicate of the grounds on which it is made and where the registered user in question consents, by the written consent of the registered user.
The variation envisaged under this section is in respect of an entry made in the register relating to the concerned registered user. Apart from the date of trademark registration of registered user (which relates back to the date on which the application for such registration was made), the entry will contain-
(a) Particulars and statements mentioned in para (i) to (iv) of sub-clause (b) of sub-section (1) of section 49;
(b) The name, description and principal place of business in India of the registered user and if he does not carry on business in India, his address for service in India.
(c) Any conditions or restrictions relating to the registration of user.
Where a registration of a registered user is limited by any period, an application may be made for varying by extension of the period of such registration in accordance with the agreement between the parties in this respect. The registration of user may be varied as regards the goods or services in respect of which it has effect.
The application on Form TM-U is to be accompanied by a statement of the grounds on which it is made, and where the registered user in question consents, by the written consent of the registered user. Rule 95 prescribes the procedure to vary or cancel the registration.
Procedure for cancellation of registration of registered user
Application for cancellation of registration of registered user under clause (b), (c) or (d) of sub-section (1) of section 50 may be made on Form TM-U. Such application must be accompanied by a statement (in triplicate) of grounds on which it is made.
An application on Form TM-U may be made by the registered proprietor of the mark or by any of the registered users, for cancellation of entry.
In case of the registration of a registered user for a specific period, as per section 49(1)(b)(iv), the Registrar will cancel the entry of the registered user at the end of that period. Where some or all the goods or services are omitted from those in respect of which a trademark is registered, the Registrar shall at the same time omit them from those specifications of registered users of the trademark registration in which they are comprised. The Registrar shall notify every cancellation or omission to the registered users whose permitted use is affected thereby and to the registered proprietor of the trademark.
Application on Form TM-U can be filed by any person for cancellation of registration of a registered user on any of the following grounds under section 50(1)(c) and (d)-
(i) That the registered user has used the trademark otherwise than in accordance with the agreement under clause (a) of sub-section (1) of section 49 or in such a way as to cause or to be likely to cause, deception or confusion;
(ii) That the proprietor or the registered user misrepresented, or failed to disclose, some fact material to the application for registration which if accurately represented or disclosed would not have justified the registration of the registered user;
(iii) That the circumstances have changed since the date of trademark registration in Cochin in such a way that at the date of such application for cancellation they would not have justified registration of the registered user;
(iv) That the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested.
(v) Any stipulation in the agreement between the registered proprietor and the registered user regarding the quality of the goods or services in relation to which the trademark is to be used is either not being enforced or is not being complied with.
(vi) In respect of any goods or services in relation to which the mark is no longer registered.
In Actomin Products Ld’s Application for rectification, the registered proprietors of the trademark applied to rectify the Register by cancelling the entry of the registered user of the mark on the ground that they had committed breaches of the agreement governing such registered user. The registered proprietors subsequently applied to the Registrar to refer the main application to the court. The Assistant Comptroller held that the registered proprietors were entitled to make such interim application and referred the application to the court. It was held by Lloyd-Jacob J, that an application under section 28(8) of the UK Act, 1938 (Section 52 of the Trade and Merchandise Marks Act, 1958) for cancellation of the trademark registration of registered user was not a suitable proceeding for determining contractual rights between the parties other than those upon which the registration of registered user was based, and that in such cases the parties must have their rights declared in accordance with ordinary legal procedure and then apply to the Registrar to take appropriate action under the section. It was further observed that the court will not assist a party responsible for misinforming the Registrar as to the true ambit of the permitted use.
Cancellation by Registrar on his own motion
Clause (d) of sub-section (1) of section 50 empowers the Registrar to cancel the registration of the registered user on his own motion or on an application of any person on the ground that any stipulation in the agreement between the registered proprietor and the registered user regarding the quality of goods/services in relation to which the trademark is to be used is either not being enforced or is not being complied with. Similar action is also available in respect of any goods or service in relation to which the trademark is no longer registered.
Ordinarily, it is to be expected that the registered proprietor, in his own interest and in the interest of the reputation of the trademark, will ensure that the quality of the goods/services associated with the trademark is maintained. A trademark is a valuable piece of industrial property in terms both of its power to attract customers and the royalties which can be demanded from the licensees. If the proprietor tolerates uncontrolled use of his trademark, the value of the property will be diminished. In an extreme case, the trademark registration in Hyderabad may become liable to be revoked if it has become deceptive or generic through such use.
As compared to the position under the 1958 Act, the exercise of power of the Registrar to cancel the registration of the registered user under sub-clause (d) is not of a serious consequence, having regard to the substantial change brought about in the new law, to recognize the use of the trademark by an unregistered user as “permitted use” within the meaning of the Act. The only disability is that an unregistered “permitted user” will not be entitled to institute any proceeding for infringement, even though the such “permitted use” complies with the conditions or limitations to which such user is subject and to which the registration of the trademark is subject.
Under sub-clause (e), the trademark registration in Bangalore may be cancelled in respect of any goods or services in relation to which the trademark is no longer registered. This situation may arise particularly as a result of successful rectification proceedings and the specification of goods in respect of the registration is amended by deletion of certain goods or services and the registration is narrowed down.
Rule 95 prescribes the procedure to vary or cancel trademark registration. Where an application under section 50 has been received for variation or cancellation of trademark registration of registered user, the Registrar will notify in writing to the registered proprietor and each registered user of the trademark. Any person who has been notified, and who intends to intervene in the proceedings may file the notice to that effect together with the statement of grounds of intervention. Thereafter the Registrar will serve copies of such notice and statement of grounds on the other parties.
In the case of any application under section 50, the applicant and any person notified may, within the time permitted by Registrar, leave evidence in support of his case, and the Registrar after giving the parties an opportunity of being heard, may accept or refuse the application or accept, subject to such conditions, amendments, modifications or limitations, as the Registrar may impose. The Registrar’s decision will be communicated in writing to the parties.
Sub-section (2) of section 50 mandates that the Registrar shall issue notice in respect of every application under this section to the registered proprietor and each registered user of the trademark. In accordance with the principle of natural justice, sub-section (3) enacts that before cancellation of trademark registration, the registered proprietor shall be given a reasonable opportunity of being heard.
This is a new provision and has been introduced having regard to the simplified procedure for trademark registration in Chennai of registered user. Section 49 (1) provides for a simple procedure for recording a person as a registered user. Sub-section (2) of section 49 mandates that where the requirements of sub-section (1) have been complied with, the Registrar shall register the proposed user in respect of the goods/services as to which he is so satisfied. It is thus sufficient to comply with the requirements of section 49(1), read with Rule 87. Unlike under the earlier 1958 Act, the consideration for registration of the registered user will be only with reference to those provisions and will not be extended to aspects unrelated to such registration, such as whether such registration will help the development of any industry or trade or will be in public interest.
Further, the trademark registration in Coimbatore of the registered user under the present law may be with or without limit of period. In order therefore to keep the register of trademarks up to date, the Registrar is empowered to require the proprietor to confirm, at any time whether the agreement, on the basis of which the registered user was registered is still in force. If such information is not received within the time allowed, the registrar will remove the entry thereof from the register.
Sub-section (2) enacts that if the registered proprietor fails to furnish the confirmation within 1 month that the agreement filed under clause (a) of sub-section (1) of section 49 continues to be in force, the registered user shall cease to be registered user on the day immediately after the expiry of the said period. The provision is automatic and self-executing in nature. Notification of such fact by the Registrar under sub-section (2) is thus only a procedural formality.