Answer ... A trademark is a right in perpetuity, subject to renewal from time to time and to ‘use’, to avoid cancellation for non-use. The length of the initial term of registration is 10 years, with renewals valid for subsequent 10-year periods. A registered trademark in India can be renewed an unlimited number of times, on payment of the renewal fees, failing which the trademark becomes liable to removal from the Trademarks Register.
Answer ... In order to renew a registration, an application for renewal must be filed in the prescribed form along with the requisite fee. The procedure for filing an application for renewal of a trademark is as follows:
- A request to renew a trademark in India should be filed six months before the registration is due for renewal, accompanied by the requisite renewal fees in the prescribed form.
- A request to renew a trademark in India can also be filed six months after the actual date of expiration of the registration, if accompanied by the requisite renewal fees along with a surcharge fee, in the prescribed form.
- If a trademark has been removed from the Trademarks Register on the grounds of non-renewal, the trademark may be restored by filing an application within between six months and one year of the date of expiration of the registration, accompanied by the prescribed fee.
Answer ... A registered trademark is open to cancellation on the application of an aggrieved party if it was wrongly registered or if it wrongly remains on the Trademarks Register. The aggrieved party must show that the trademark was registered in contravention of, or has failed to observe a condition of, the Trade Marks Act, 1999. A cancellation application can be filed on the following grounds:
- The mark was not distinctive at the time of registration;
- The mark conflicts with a previously existing mark;
- Use of the mark is likely to cause confusion and deception among the trade and public;
- There is no bona fide intention to use the mark; or
- There has been no commercial use of the mark for a period of five years and three months from the date of issuance of the registration certificate.
Answer ... The registrar of trademarks will not cancel a registration on his own initiative. However, the registrar may, subject to Rule 60 of the Trade Marks Rules, 2017, proceed to remove a trademark from the Trademarks Register for failure to file a renewal request within the prescribed timeframe.
Answer ... Section 57 of the Trade Marks Act, 1999 states that any aggrieved party may file a cancellation petition before the registrar of trademarks or before the Intellectual Property Appellate Board (IPAB). After giving notice and the opportunity to be heard to both parties, the registrar or IPAB may cancel, vary, make or remove the trademark. The application must be filed in the prescribed manner and should be accompanied by a statement of case, in triplicate, setting out the nature of the applicant’s interest, the facts upon which the case is based, and the relief sought.
Answer ... A decision of the registrar of trademarks may be appealed before IPAB. A review petition can be filed at the Registry of IPAB against an order of IPAB. The Trade Marks Act, 1999 does not allow for an appeal against an order of IPAB. However, a writ petition may be brought before the high court with jurisdiction.