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What is the Validity of a Non-use Trademark?

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Last Updated on June 22, 2024 by Swetha LLM

Any unique logo or mark that helps distinguish one product or service from another offered by a competitor is considered a trademark. Following registration under the Trademark Act, a trademark’s owner is given maintenance obligations to guarantee ownership preservation along with specific rights to use the mark often.

To maintain ownership of a trademark, usage and renewal must occur on a regular basis; failure to do so may result in the owner losing the ability to use and enforce the trademark. Furthermore, if a trademark’s owner or proprietor abandons it for any reason other than misuse or non-use, it may be removed under trademark regulations.

The Importance of Trademark Use

To remain valid, a trademark must be actively utilized in commerce according to trademark regulations across the world. The usage of a trademark indicates that it is still relevant and distinctive in the marketplace. Not using a registered trademark can have major consequences for brand owners.

The Validity of a Trademark

In India, a trademark is authorized for ten years following the date of registration as indicated on the trademark certificate. However, in such rectification or opposition processes, a trademark owner may forfeit their rights to the brand if they have not used it for more than 63 months.

Non-Use of the Trademark

A trademark that has been registered may be revoked within five years of the completion date. Owners who have not utilized their mark or given permission for it to be used may find the Indian trademark registration process difficult. In some circumstances, the mark might not meet registration requirements if there are good reasons not to use it. Under the Indian trademark system, unlike other jurisdictions, there is no requirement to file an affidavit attesting to continuing trademark usage. Revocation of a trademark from the trademark registry is possible if its owner does not use it for five years or longer. It is necessary to have evidence of ownership and validity in India to register a trademark.

Impact of Non-Use of a Trademark

When a trademark is not utilized in the United States or India, its registration is canceled. This is the main effect. Even after a prolonged period of inactivity or non-reregistration, trademarks are frequently utilized to introduce new products and services. Trademark owners who are concerned that a new user may contest their trademark based on non-use, leading to the complete removal of their mark from the trademark registry, choose to remain silent about the new mark that violates their current mark.

Case Law Pertaining to Non-Use of Trademarks

Russell and Hornby Ltd. vs. Zamindara Engineering Co: In this instance, it was determined that the trademark was lawfully registered in the plaintiff’s name and had been renewed; consequently, the defendant was not permitted to use the plaintiff’s specific mark, as doing so would have violated the plaintiff’s exclusive rights. In the end, it was shown as a fact that the plaintiff’s inability to use the name was not her choice but rather the consequence of government regulations placed on the dairy business, and no abandonment occurred in such circumstances.

By Whom May a Non-Use Trademark Be Removed?

An application for trademark removal from the Register can be made to the Registrar or the Intellectual Property Appellate Board by anybody who acquires a trademark without intending to use it or who does not use it for five years.

Anyone may file an application for the withdrawal of a trademark within three months of the trademark’s five-year non-usage date as long as the trademark has not been used during the preceding five years. If the trademark is not used for three months following the filing of the application, the owner may be sued for trademark removal. This is due to the possibility that a third party could assert that the owner of the trademark registered it without being granted permission to use it.

Removal of a Non-Use Registered Trademark

The following grounds allow the Registrar to withdraw a trademark from the Register, per Section 47 of the Trademarks Act of 1999:

  • Absence of a Bonafide Intent: A trademark may be removed if it is filed carelessly and is not intended to be used in connection with those goods or services.
  • Five years of Non-Usage of the Trademark: A trademark may be removed from the trademark registry if a company does not use it for five years straight from the date of registration. This five-year period began on the day the trademark was effectively registered.

What Constitutes a “Bonafide Use” of a Trademark?

As per the legal regulations, legitimate use denotes sincere and truthful use. “Not pretended” is the requirement. Therefore, “bonafide use” would be the use of a business trademark in its correspondence and public relations. By common business standards, this is to be evaluated.

In Which Cases Would a Trademark Be Protected Against Being Removed?

In three circumstances, according to trademark law, a trademark will remain in effect even in the absence of usage. They are:

  • In case the applicant intends to register the company under the Companies Act after incorporating. Hence, it is acceptable to refrain from using the trademark while awaiting its assignment to that business.
  • It is the owner’s intention that someone else utilize the mark. So, you cannot remove a trademark if you are waiting for it to be registered under someone else’s name.
  • Unique business conditions: When unique circumstances rather than the owner’s error are to blame for a trademark’s non-use.

A Registered Trademark’s Partial Removal

Removing a portion of the trademark is known as partial removal.

  • One trademark owner may request that the Registrar remove another trademark that appears to be inactive if there are two trademarks with identical registrations.
  • Limitations on the use of the first-mentioned trademark registration may also be imposed by the trademark’s tribunal in response to an application made by that individual to have the other trademark removed for non-use.

Methods of Preserving Trademark Validity

  • Save Use Documents: All trademark usage in business should be thoroughly documented, including sales information, marketing collateral, and examples of products and advertisements.
  • Employ Brand Extension Strategies: To ensure that your brand remains relevant and well-known, explore new product categories or markets to join.
  • Examine Your Opponents: Keep a watch out for possible infringers even when the mark is not being used, and take prompt action to protect your trademark rights.
  • Get Expertise Advice: Trademark professionals can assist you with non-usage-related concerns and protect the validity of trademarks.

Conclusion

In order to preserve their exclusive rights and lower the possibility of abandonment, trademark owners must use their marks. If a trademark is not used, it could be taken down from the registration, making its owners open to infringement by third parties. Interested parties may file rectification actions to contest the validity of a registered trademark in circumstances of non-use. Trademark owners and potential challengers should both be well-versed in these proceedings because failing to participate in them in a timely and efficient manner might cost you valuable trademark rights.

Swetha LLM

Swetha, LLM, a lawyer with skills in writing legal content, is passionate about simplifying complex legal concepts and engaging readers with her insights of nuanced legal ideas. She is able to preserve the accuracy of legal material while adjusting the tone and style to fit the audience.