Trademarks are not ‘revoked’ as such in India. Under the Act, the registered marks may be removed from the register, cancelled, or rectified in the Register.  They can be done at the instance of the registered proprietor himself, the Registrar, or by a third party.

Who can file?

The recourse available to any aggrieved party, after the registration of trademark, in India is the rectification or cancellation of the trademark.  Persons aggrieved here means persons who have an interest in the mark being removed, or whose interests will be damaged if the impugned mark is allowed to persist in the Register. Therefore, the person filing for such rectification or cancellation must have a substantial interest in seeking the cancellation of the trademark.

Authority:

The aggrieved person may file for rectification or cancellation before either the Registrar or the Appellate Board.

Grounds:

The grounds for seeking cancellation or rectification as given under the Act are as follows-

1. Failure to observe a condition laid down as a pre-requisite to the registration of the mark
2. The absence or omission of any entry from the Register
3. The entry in the Register was made without sufficient cause
4. There is an error or defect in any entry made in the Register
5. The entry is wrongly remaining  in the Register
6. The trademark is registered as a result of fraud or misrepresentation
7. The renewal fee has not been paid
8. The trademark has not been used for more than 5 years
9. The trademark is not in conformation with the grounds under Section 9 or 11 of the Trademarks Act,1999.
10. The mark was not registered or used in good faith.

There are a few specific grounds mentioned in the Act for both certificate marks and collective marks. Certification marks are those which are capable of distinguishing them from other similar goods and services in aspects such as quality, place of manufacture, etc. In the case of certification marks, the grounds are as follows-

1.The proprietor is no longer in the position to certify those goods and services.

2. The proprietor did not observe the provisions meant to be observed by him.

3.  It is in public interest to either cancel the mark, or vary it to meet certain conditions.

Collective marks are the trademarks which identify the goods as originating from an association of persons, such association not being a partnership firm. In the case of collective marks, they are as follows-

1. The manner in which the mark was used misled the public
2. The proprietor has failed to observe the regulations in using the mark.

Procedure:

Application: The application must be made in Form TM-O, and this application must contain the extent of interest of the applicant, the facts upon which his case rests, and the relief which he seeks. The application and statement are usually left at the Trademark Registry, and it becomes the duty of the Registrar to ensure that the registered proprietor gets a copy of both, within a period of one month. The application must be verified by the applicant or his duly authorized agent.

Counterstatement: Within three months of receiving the application and statement, the registered proprietor must file a counterstatement. If such a counterstatement is filed, then the Registrar must serve a copy of the same to the applicant. If no counterstatement is filed by the registered proprietor, within the three month time period, then the applicant may proceed to file evidence in support of his application, in the form of an affidavit. A copy of this will be given to the registered proprietor.

Evidence: If the evidence is filed by the applicant, then the registered proprietor will have two months from the date he receives a copy of the affidavit to file evidence in his favor. He may choose not to do so. The applicant is then given another opportunity to file more evidence in his favor, within a month of receiving the copy of the registered proprietor’s affidavits, and no more evidence may be allowed to be filed by either side after this.

Hearing: The matter then goes for hearing. Before this, if any documents are in any language other than Hindi or English, an attested translation of those documents in either of the mentioned languages must be present. A notice is sent out by the Registrar and the hearing will be at least a month away from the date of issue of notice. A party may request for adjournment by way of a Form TM-M, with the prescribed fee, and no party can be granted more than two adjournments, each not exceeding 30 days. The Registrar considers the written submissions in addition to all the evidence he is presented with. His order as to cancellation, rectification or denial of the application for the same is then communicated to both the parties.

Any third-party alleging interest may file an application under Form TM-O to intervene.We hope this article was a useful read. 

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