Removal from the register on ground of non-use – Trademark Registration
Removal from register and imposition of limitations on ground of non-use:
A registered trademark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the registrar or the appellate board by any person aggrieved on the ground either-
- That the trademark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of those goods or services by him or,
- in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trademark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or
- That up to a date three months before the date of the application, a continuous period of five years from the date on which the trademark is actually entered in the register or longer had elapsed during which the trademark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being:
Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trademark in respect of the goods or services in question, or where the tribunal is of opinion that he might properly be permitted so to register such a trademark, the tribunal may refuse an application under clause (a) or clause (b) which relates to any goods or services if it shows that it has been before or during the relevant period, as prescribed, any proprietor use the bona fide of the trademark thereof for the time being which in relation to
- Goods or services of the name description; or
- Goods or services associated with those goods or services of that description being goods or services, as the case may be, in respect of which the trademark is registered.
Where in relation to nay goods or services in respect of which a trademark is registered
- The circumstances referred to in clause (b) of sub-section(1) are shown in exist so far as regards non-use of the trademark in relation to goods to be sold or otherwise traded in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; or in relation to services for use or available for acceptance in a particular place in India or for user in a particular market outside India; and
- A person has been permitted under section 12 to register an identical or nearly resembling trademark in respect of those goods, under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or in relation to services for use or available for acceptance in that place or for user in that country, or the tribunal is of opinion that he might properly be permitted so to register such a trademark,
On application by that person in the prescribed manner to the appellate board or to the registrar, the tribunal may impose on the registration of the first mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.
The way we consider the importance about the trademark registration is equal to the proper usage of the registered trademark. You can avail the best services and prices for trademark registration in Coimbatore.
An applicant would not be entitled to rely for the purpose of clause (b) of sub-section (1) or sub-section (2) on any non-use of a trademark which is shown due to special circumstances in the trade that includes the restriction in the use of trademark in India imposed by any regulations or law and not having any intention to abandon or not to use the trademark in relation to services or goods to which the application relates.
Section 46 of the trade and merchandise marks act:
This section is intended to provide a penalty in the case of a trademark being allowed to become defunct. No proprietor is entitled to sit tight on his trademark without actually using the same as such. The policy of the act is to protect trademarks used as such. In the case of a mark not put in use, there is no point in giving protection to it.
Once, therefore, a person gets a particular style registered as his trademark, he gets exclusive right to the use of the trademark in relation to the goods, in respect of which it has been registered.
Under section 46 which provides for removal from register and imposition of limitations on grounds on non-use, it is open to an aggrieved person to have the trade mark of any person who has registered it, removed from the register on the ground mentioned in clause (a) of sub-section (1) of that section. The two factors constituting that ground, which are cumulative, are:
That the trademark was registered without any bonafide intention on the part of the applicant for registration that it should be used in relation to those goods by him and
That there has, in fact been no bona fide use of the trademark in relation to these goods by any proprietor thereof for the time being up to a date one month before the date of the application. The first limb is a mental factor, the bona fide intention to use of the goods covered by the trademark registered, so, in order to succeed, the applicant should show
- That he is an aggrieved person; and
- That the ground under clause (a) of section 46(1), exists.
The policy behind section 46(1)(a) is that in competition with person dealing in the same kinds of goods, the person hit by clause(a) should not be regarded as a person aggrieved.
This is for the obvious reason that such a person has nothing to do with such goods as in the case of the respondent here.
The distinction between clause (a) and clause (b) of old section 46 is that if the period specified in clause (b) has elapsed and during that period that has been no bona fide use of the trademark, the fact that the registered proprietor had a bona die intention to use to trademark at the date of application for registration becomes immaterial and the trademark is liable to be removed from register unless his case falls under section 46(3), while under clause (a) where there had been a bona fide intention to use the trademark in respect of which registration was sought merely because the trademark had not been used for a period shorter than five years from the date of its registration will not entitle any person to have that trademark taken off the register. If place of address of non-applicant for service in India in application for registration of trademarks in within territorial limits of the trademarks registry.
The registrar has discretionary power to order for removal of the name of registered trademark on the ground of non-use.
Once an affidavit is filed in evidence the same cannot be allowed to be withdrawn by parties without leave of the court granted on proof of adequate grounds.
Whether or not a party had a bona die intention never to use the trademark as registered must be established as a fact on the material placed on the record.
It is not possible to infer it as a matter of law merely from the use if the registered trademark by the party with an alteration in breach of the conditions of registration.
If a condition of the registration is broken, it may be open to the assistant register to remove the mark for this or any other reason, but not on the ground that the party never had the intention to use the registered trademark.