When can a Trademark be Removed from the Registry?

Published On: Nov 26, 2019Last Updated: Nov 26, 20194 min read

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, 1958. Currently, the Trade Marks Act, 1999 governs the law relating to the trademark registration in India.

A trademark is a kind of ‘intellectual property’ consisting of recognizable design, sign or expression which differentiates products/ 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.

Product trademark; Service trademark; Collective trademark and Certification trademark are the types of a trademark which can be under the Indian Trademark Law. The trademarks used to identify goods or products are called ‘Product trademark’, whereas, the trademarks used to identify the services are called ‘Service mark’/ ‘Service trademark’.

Once registered it is valid for 10 years after which it needs to be further renewed for the next 10 years. A trademark can stay perpetual as long as it is maintained and renewed on-time and as per the governing trademark 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 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 no use as explained below –
    • Trademark is not registered with a bona fide interest, and is not put to use three months prior to the date of application; or
    • There is no bona fide use of the trademark from a date three months prior to the date of application up to a continuous period of five years from the date on which trademark is actually registered.
  2. The trademark can be removed from the registry in case of non-payment of the prescribed 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 a 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 a collective trademarks –

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

Relevant Fees and Form Number

Sr. No Particulars Relevant Fees Relevant forms
For Physical filing For Physical filing
1 Application for removal under section 47 INR 3,000 INR 2,700 Form TM-O
2 Counter statement in answer to an application under section 47 INR 1,000 INR 1,000 Form TM-6
3 On notice of intention to oppose hearing under section 47 by each party to the proceeding concerned INR 500 INR 500 Form TM-7
4 On an application under section 47 for removal of a trademark from the register in case of a registered collective mark or a certification trade mark INR 3,000 INR 3,000 Form TM-26
5 On an application under rule 94 for leave to intervene in the proceeding under section 47 for removal of the trademark from the register in respect of collective trademark or certification trademark INR 500 INR 500 Form TM-27

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 with the trademark entry, may file an application for rectification of trademark by following the below procedure –

  • The application for rectification can be filed with the registrar or with the IPAB (i.e. Intellectual Property Appellate Board). 
  • An applicant is required to file an application in Form TM-26 (Application for rectification of the register or the removal of the trademark from the register). 
  • Along with the application, the applicant is required to submit the case statement (i.e. statement of grounds). 
  • The applicant is also required to submit all the 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.



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CA Poonam Gandhi
About the Author

CA Poonam Gandhi

Chartered Accountant, based at Ahmedabad having vast practice experience of more than 9 years in the field of Indirect Taxation. Currently, working as a 'freelance content writer' and associated with the top most leading sites. Also acting as an educator for the taxation course, 'Certificate on taxation law and GST', for the site https://www.intolegalworld.com/.