Overview
Any distinguishing symbol or mark that helps set one product or service apart from another is a trademark. After the mark is registered under the trademark laws, it grants the owner certain rights to use the mark repeatedly and obligations to uphold in order to preserve ownership.
A trademark must be utilized and renewed on a regular basis to preserve the owner's rights; otherwise, the owner may forfeit the trademark's validity and enforcement authority. Additionally, trademark regulations require proof of use; otherwise, trademark that is no longer in use by its owner or proprietor may be subject to removal on the grounds of non-use.
What Does Non-Use of a Trademark Mean?
Trade marks help their owners promote their products effectively. As a result, the consumer begins to recognize the product because of its solid reputation and consistent quality, which benefits the producer. Trademarks function as an advertising tool and assist in indicating origin of goods or services provided by a manufacturer or service provider. However, registering a trademark can be a challenging process, because it requires substantial effort to establish the mark's distinctiveness and originality.
The result of non-use is the removal of a trademark from the trademark registration. Section 2(2)(c) of the Trademarks Act of 1999 makes a distinction between using a mark in connection with goods and services. The mark's application on, or any other physical or other relationship with, the goods is referred to as use. The result of non-use is the removal of a trademark from the trademark registration. Section 2(2)(c) of the Trademarks Act of 19991 makes a distinction between using a mark in connection with goods and services. The mark's application on, or any other physical or other relationship with, the goods is referred to as use.
In the case of M/S. J.N. Nichols (Vimto) Limited vs Rose & Thistle and Another, the Calcutta High Court adopted a broader interpretation of the term 'use,' ruling that it does not strictly require the physical sale of goods. The Court held that even mere advertisement of a trademark, in the absence of actual goods, can constitute valid 'use' of the mark. It is crucial to emphasize repeatedly that the term "use" pertains only to bona fide use or legitimate uses conducted in the ordinary course of business, rather than uses made solely to preserve the rights to a mark. Consequently, for a usage to be deemed legitimate, the mark must genuinely be employed for commercial benefit. Conversely, unless proven otherwise, any registered trademark that has not been utilized for 5 years following its registration and 3 months prior to registration is liable to revocation or removal from the trademark registry.
Impact Of Trademark Non-Usage
A registered trademark can be subject to cancellation five years after the completion of its registration if it has not been legitimately used by the proprietor or with their consent, and no sufficient justification for such non-use is provided. The main consequence of this non-use is the removal of trademark from the official register.
A trademark that remains unused for five years may be removed from the register, unless the owner can demonstrate that this non-use arose from "special circumstances" in their business—such as regulatory or import restrictions—rather than an intentional decision to abandon the mark. In the case of K.R Beri & Co. v. The Metal Godds Mfg. Co Pvt Ltd. and Anr, the Division Bench clarified that the term "usage" does not necessarily require an actual, physical sale of products. It may also encompass advertising, even if it does not imply the existence of the goods. In such modification and opposition proceedings, the trademark owner risks losing their rights if they have not utilized the mark for over five years and three months. While the party requesting the amendment typically bears the burden of proof, this burden may shift to the trademark owner during the hearing. If the owner fails to demonstrate the mark's usage, it may be removed from the register. A registered trademark that has not been used by the owner in relation to the goods or services for a continuous period of five years or more may be withdrawn from the register. As per Section 47 of the Trade Marks Act, a trademark may be removed from the register after it has been registered, provided the applicant meets one of the following conditions: the applicant may indeed seek the removal of the trademark on the basis that the owner registered it without the intention of using it in relation to the pertinent goods or services.
Conclusion
Trademark rights are not merely acquired through registration but are sustained through consistent and bona fide use in the course of trade. The Indian legal framework, particularly under Section 47 of the Trade Marks Act, 1999, emphasizes that a registered trademark may be vulnerable to removal if it is not actively used for a continuous period of five years post-registration. Courts in India, including in cases such as J.N. Nichols (Vimto) Ltd. v. Rose & Thistle and Kabushiki Kaisha Toshiba v. TOSIBA Appliances, have clarified that "use" includes genuine commercial exploitation of the mark—whether through actual sales or advertising—and not token or strategic acts merely to preserve registration.
In addition to undermining the owner's legal position, non-use of a trademark without a good reason allows third parties to file revocation. Therefore, in order to avoid losing their registration rights, trademark owners must make sure that their trademarks are used actively and demonstrably in relation to pertinent goods or services. Ultimately, trademark law aims to protect marks that fulfill their commercial purpose and contribute to marketplace clarity—not those retained solely to block competitors.
Footnote
1 to the use of a mark,— (i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods; (ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services; (d) to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of section 3; (e) to the Trade Marks Registry shall be construed as including a reference to any office of the Trade Marks Registry
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