Cancellation of Trademark

The Indian Trademark Act provides cancellation and rectification of the trademarks. The scenarios under which your trademark can be cancelled will introduce under Section 47 of the Trademark Act, 1999.

In India, a trademark stands fit for removal from the register of trademarks under two scenarios.

  • Trademark Cancellation

 If non-use of the trademark has been observed during the time period of 5 years from the day of its registration.

  • Trademark Opposition

If non-use of a trademark is seen 3 months preceding to the time of registration application filed with regards to date of filing the registration application, in relation to the goods or products specified in the application registered.

What is Trademark Cancellation?

A trademark cancellation is a legal proceeding before the Trademark Trial and Appeal Board (TTAB) for removal of the registered trademark from the federal register. A registered trademark is subject to cancellation under certain conditions.

What are the grounds for Trademark Cancellation?

The Section 47 of the Indian Trade Marks Act of 1999 lays down certain conditions on the grounds of which the cancellation of the registered trademark (related to specified product /goods) stands validated from the register of trademarks. You can request for trademark cancellation either within 5 years after registration or after 5 years.

Trademark Cancellation Within 5 years

The most common grounds for cancellation if filed within 5 years of the trademark's registration:

  • trademark is likely to confuse with the business
  • trademark is of such nature as to deceive the public
  • trademark is descriptive in nature
  • trademark has not defended in at least 3 years (abandonment of mark)
  • trademark that is merely a surname, geographically descriptive

Trademark Cancellation After 5 years

The grounds for cancellation when the trademark registered for more than 5 years:

  • the trademark becomes common (Generic Trademark)
  • the trademark contains scandalous or obscene matter
  • fraudulent registration of the trademark
  • the trademark is functional
  • the trademark is disparaging

Basic information required while applying for Trademark Cancellation:

 Who can file the petition for trademark cancellation?

 Any person whose trading interest affected by the registration of the mark including dilution by tarnishment.

 What is contained in the petition for cancellation?

  • Caption of the parties
  • Factual background
  • Grounds for cancellation
  • Relief

 Where can I file cancellation petition?

 The petition can be filed at the trademark office where trademark originally registered.

 Is the registrar order appealable?

 Yes, the appeal can be filed before Intellectual Property Appellate Board within 3 months from the date when the order is communicated.

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