Trademarks protect your company’s identity. However, sometimes companies have to abandon or cancel a trademark. The cancellation process for a trademark follows a few important and specific rules and laws. Knowing the basic steps will help you successfully and legally cancel a trademark. This post centres around the cancellation process of a trademark. We’ll cover the main steps to take and the details you need to know.
Trademark Withdrawal: What It Means
Cancelling a trademark means taking back or removing a registered trademark from the official trademark office records. This process is different from letting a trademark lapse or stop using it. A trademark lapses when you don’t renew it or when you stop using it in business for a while.
This surrender of trademark possession results in the owner of the mark losing their proprietary rights granted to the mark, which again allows the trademark to be used in the public sphere and registered.
In India, cancellation or withdrawal of a trademark can be conducted voluntarily or when facing rejection by the trademark officer or hearing officer. The causes behind trademark withdrawal can emanate from key business factors, legal constraints, or a strategic shift in brand building.
When Trademark Withdrawal Results
You can take back a trademark in two ways:
Giving Up the Trademark by Choice
If you want to cancel your trademark on your own, you can do it online. This leads to the Registrar marking the trademark as “withdrawn” in the Indian Trademark Registry.
Withdrawal Subsequent to Rejection
In the event that an application for a trademark is rejected and dismissed by the Trademark or Hearing Officer, the applicant may remove and withdraw it. This withdrawal is treated the same as non-filing of the application, with no penalties.
Regulatory Framework Guiding Trademark Withdrawal
The Trademark Act (1999) gives the statutory framework for the withdrawal of trademarks, establishing the requirements as follows:
- Discontinuance: A non-continuation trademark abandoned for five years since its registration is withdrawable or This helps to ensure that trademarks remain in active use.
- Public Delusion: Withdrawal can be upheld if the use of trademark results in public confusion or delusion. This helps prevent any misrepresentation of merchandise or services for which it is recognised.
- Omission or Misstatement: Withdrawal of a trademark is a recourse when there is a misrepresentation or negligence during the registration procedure, which would have, on the contrary, prevented registration. If crucial details are missing or inaccurately presented during the registration procedure, it would bar registration.
- Realignment in Brand Evolution: After registration, if there is any shift in brand condition or context that contradicts or negates the registration, immediate withdrawal of the trademark can be accorded.
In addition to these legal grounds, there can be various practical grounds on which trademarks can be cancelled or withdrawn, namely:
- The trademark was registered without any actual intention to use it.
- Non-use of a trademark for five years after its registration.
- A trademark resulting in consumer confusion.
- Inaccurate details or missing information in the trademark application.
- Brand modifications made after trademark registration render the trademark inapplicable.
- Non-compliance with the rules laid by the Registrar of Trademarks.
- Closure of business by the trademark owner.
Sanctioned Bodies to Deal with Requests for Trademark Withdrawal
Across India, the task of supervising the cancellation of trademark registration lies under the ambit of the Registrar of Trademarks and the Intellectual Property Appellate Board. The Registrar of Trademarks deals with trademark withdrawal appeals. Together with this regulatory body, the Intellectual Property Appellate Board also plays a critical role in solving problems that relate to trademarks. After both of these sanctioned bodies verify that the applicant has fulfilled all the terms and conditions for trademark withdrawal, they formally cancel or revoke the trademark registration.
Requisite Forms for Starting a Trademark Withdrawal
The Trademark Rules of 2017 outline the process for trademark withdrawal, which involves submitting special forms to the Registrar. These key forms are core to the withdrawal application and must be filed along with the prior withdrawal request.
The two forms crucial for withdrawing the trademark are:
- Form TM – O: Applied for withdrawing trademark on the grounds stated in Sections 47 and 57 of the Act.
- Form TM- U: Applied for withdrawing trademark on the grounds stated in Section 50 of the relevant Act. It is applied when withdrawal is related to the cancellation or alteration of a registered trademark.
Key Documentation for Trademark Withdrawal Procedure
For the expeditious handling of an application for cancellation of a Trademark, the following documents are essential.
- Power of Attorney (POA) or Authorization Letter: This key document is required to authorize a delegated person or entity to act in the interest of the trademark owner during the withdrawal process. It is an affirmation on your part to approve their proceeding with issues related to the withdrawal of the trademark.
- Additional Documentation: Further documentation can include proof of disuse and abandonment, documents citing the justification for withdrawal, and any written communication with the Trademarks Offices that is relevant to your case.
- Informing and Reporting to the Opposition Party: If any prevailing resistance to your trademark induces its withdrawal, then the usual procedure is to brief the same to the opposing party by furnishing them a copy of your cancellation or withdrawal application. This helps maintain transparency and facilitates reconciliation in the event of any dispute.
Withdrawal Process of Trademark: Specific Steps
The process of withdrawing a trademark is pretty straightforward and involves a series of steps that you need to follow.
Step 1: Submit Your Withdrawal Application
To kick things off, you’ll need to fill out a formal request for cancellation or withdrawal electronically to the proper Trademark Registry. This is a fundamental step for applicants who opt to renounce their claim for a trademark application due to discretionary reasons.
Step 2: Assessment by the Trademark Office
The call for withdrawal is subject to overall scrutiny by a delegated trademark official upon filing. This kind of evaluation plays an important role in checking whether the withdrawal meets all the applicable rules and standards.
Step 3: Decision on the Withdrawal Request
A trademark official can make a decision on the withdrawal appeal. The outcome of the decision could either uphold or deny the request, which in turn guides the follow-up actions on the trademark application.
Step 4: Official Removal and Modification in the Record
After confirmation of the call for withdrawal, a trademark reviewer officially accords their consent to the revocation or withdrawal of the trademark. Thereafter, the Trademark Registry revises and amends its records, and alters the status of the application to “Trademark Withdrawn”. This modification in the record stamps the final official seal on the withdrawal of the trademark.
After the trademark is withdrawn, it is available in the public domain for utilization and registration by others. Any legal claim held by the earlier trademark holder over the mark stands void. What follows is an instant update in the official records, with the digital platform of the Indian Trademarks Registry indicating the application status as “withdrawn.
Conclusion
Withdrawal of the trademark necessitates a rigorous procedure stipulated by the Trademark Act 1999. When a business decides to abandon the trademark voluntarily before its registration for a number of reasons, ranging from business strategy, brand repositioning, or incorrect filing, it is executed by a submission of a formal request before the Trademark Registry using the Form TM-M, together with the relevant fee and a legitimate ground for such a request.
Above all, a knowledge of the appropriate trademark withdrawal process safeguards the brand perception and preserves the integrity and transparency of the Trademark registration mechanism across India.
