When Can a Trademark Be Removed From the Registry?

Historically speaking, the Trade Mark Act, 1940 was the first statutory law formed for governing the trademark in India. It was replaced by the Trade and Merchandise Marks Act, of 1958. Presently, the Trade Marks Act, 1999 governs the law relating to trademark registration in India.

A trademark is one of the types of intellectual properties consisting of a recognizable design, sign or expression which differentiates goods and services of a particular source from those of others. The trademark may be located on a label, package, and voucher or on the product itself.

Series trademarks; wordmarks; collective trademarks and certification trademarks are the types of a trademark that can be registered under the Indian Trade Marks Law. The trademarks used to identify goods or products are referred to as wordmarks and device marks, whereas, the trademarks used to identify the services are referred to as service marks.

Once registered a trademark is valid for 10 years after which it needs to be further renewed for the next 10 years. A trademark is granted to a proprietor for a perpetual time, as long as it is maintained and renewed on time in accordance with the governing laws.

If one fails to renew the trademark or stops using it, it can be abandoned and removed from the trademark registry.

The present article highlights the grounds on which the trademark can be removed from the registry along with the procedure to be followed for the removal of collective trademark and relevant forms and fees thereon.

Grounds on Which the Trademark Can Be Removed From the Registry

There can be several grounds for removal of the trademark from the registry; however, some of them are mentioned hereunder

1. The trademark can be removed from the registry on the grounds of non-use as explained below –
   
   
   • Trademark is registered in bad faith, when the intention is not to use the mark but to keep it unused after getting a trademark registration
     
     OR
     
     
   • Not using a registered trademark for a continuous period of five years from the date on which the trademark is actually registered.
     
     
2. The trademark may be removed from the trademark registry in case of non-payment of the prescribed renewal fees.

Removal of a Collective Trademark

A collective trademark is a trademark owned by an organization. Such a collective trademark is used by the members of the organization with the purpose to recognize themselves with a level of quality/ accuracy; geographical origin or such other characteristics as set by the organization.

The Trademark Removal Procedure of Collective Trademarks –

• An application for the removal of a collective trademark from the register has to be made in the format prescribed by the trademark laws of India
  
• The application (for removal) in the prescribed format is to be accompanied by a statement mentioning the nature of the applicant’s interest; the facts of the case and the relief sought. 
  
• In the case of multiple registered users, the application is to be accompanied by as many copies thereof as there are registered users. 
  
• If the application is filed by a person and not a registered proprietor of the trademark, then such application shall be left in the trademark registry.

Rectification of Trademark

Rectification of trademark facilitates correction or rectification of error or omission in the details of the registered trademark. Any aggrieved party, being affected by the trademark entry, may file an application for rectification of the trademark by following the procedure below –

• The application for rectification can be filed with the registrar,
• An applicant is required to file an application in Form TM-O (Application for rectification of the register). 
• Along with the application, the applicant is required to submit, statement of the case (i.e. statement of grounds). 
• The applicant is also required to submit necessary and acceptable supporting evidence.

Conclusion

The cancellation/ rectification or removal of the trademark can be prevented by taking care of the following points.

• Timely trademark renewal,
• Non-use of the trademark for a period exceeding five years,
• Not following any act which can destroy the distinctive characteristics of the trademark etc.