Trademarks in India are registered under the Trademarks Act,1999 (“Act”). The Trademarks Rules, 2017 (“Rules”) lays down the procedures and rules relating to trademarks. A proprietor (trademark owner) can get his trademark registered under the Act. The registration is valid for ten years. If the registration is not renewed, it gets expired. The proprietor can also cancel his registration by an application to the Trademarks Office. Voluntary cancellation of a trademark takes place when the proprietor makes an application to cancel his trademark.
Two Key Reasons for Cancellation of a Trademark
- If the owner of the trademark registered the mark of identity without the bona fide intention to use it.
- Not using the trademark for 3 months before the date of application of registration or not using it for 5 years from the exact date of registration.
Surrender of trademark by the owner
There can be several occasions where the owner of the trademark has the right to voluntarily surrender the trademark. It can be when the owner and the 3rd party get into an agreement for the new business or for any decision taken by the owner of the trademark. The owner has to file an application for surrender of a trademark to the registrar under section 58, 1(c) of the Trade Mark Act, 1999. After the receipt of the application, Registrar can cancel the entry. If before the expiry of the trademark registration, the application has not been filed for the renewal, then it would be treated as a voluntary surrender of the trademark by the owner himself.
Documents Requirement
- Power of attorney (if appointed)
- If the trademark owner is a company then the copy of the declaration for certifying the surrender of the trademark.
Procedure for Surrender of Trademark Registration
- The owner of the trademark has to file an application form TM-P to the registrar for the surrender of a trademark with appropriate prescribed for surrender.
- After that attach an affidavit with the application stating the ground of voluntary surrender of a registered trademark.
- Before submitting, make sure to sign an affidavit and verify by the owner of the registered trademark who wants to surrender the trademark.
- If the owner does not attach an affidavit, then the registrar will send scrutiny notice to the trademark owner for its attachment
- After submission of the application and documents, further procedures will take place by the registrar. It will take four to six months for the final surrender of the trademark. Post surrender, the registrar will notify the owner of the trademark.
FAQs
Who Can File the Rectification/Cancellation of Trademark?
- A person affected/damaged by the registration or someone who has a pending application for the same mark
- Or, any person wanting to remove the mark to fend off the damage if the mark is determined
- It cannot be filed anonymously, the onus of proving the identity remains on the owner.
Grounds of Trademark Cancellation?
An aggrieved person can request for cancelling the trademark either within 5 years of brand registration or after 5 years of registration.
Trademark cancellation within 5 years, if it is:
- Deceiving the public
- Creates confusion within the business
- Too descriptive
- Just a geographically descriptive
- Not defended by the applicant for at least 3 years
Trademark cancellation after 5 years if:
- The mark has become too generic (commonly used)
- If the proprietor registered by fraudulent means
- The trademark contains obscene things
- It is disparaging
