- A registered trade mark is valid for 10 years from the date of application. It can be renewed thereafter for every 10 years. It is open for cancellation anytime during its validity.
- A registered trade mark is open for cancellation on the application of a person aggrieved if the mark has not been put to commercial use for a period of five years from the date of registration. The important point is that it is after the registration date and not the date of application. This is not automatic but only on a petition being filed for cancellation.
- A registered trade mark is open for cancellation on the application of a person aggrieved if the mark is wrongly registered or wrongly remaining of the trade mark register. The person aggrieved is required to show that the mark was registered in contravention of the Trade Mark Act or any other law. Further, the applicant can show that a mark though validly registered has for the change in circumstances become bad and liable to be rectified or cancelled.
- A person aggrieved has the option of filing for cancellation petition before the Registrar of Trade Mark or before the Intellectual Property Appellate Board.
- However, when a civil suit is pending, and a person desires to seek cancellation of a registration, such a petition can be filed only before the Intellectual Property Appellate Board. Further, as held in the case of Toyota by the Supreme Court, such a petition can be filed only after seeking leave of the civil court. The earlier law that a person has an inherent right to seek cancellation has been done away with. Therefore, the civil suit has to be prima facie satisfied that a registered trade mark is vulnerable for cancellation.
- The proceedings seeking rectification or cancellation of a registered trade mark are an original proceeding. Therefore, parties are required to file evidence by way of affidavit. The deponent of the evidence can be subjected to cross examination. However, in practise, the evidence affidavit is considered to be true unless some glaring inconsistency or factor is shown which could cast doubt on the documents or statements made therein.
- The decision of the Registrar of Trade Marks is appealable before the IPAB. The Trade Marks Act does not provide for any appeal against the order of IPAB. However, a writ petition is maintainable before the jurisdictional High Court. Whereas in Chennai, Mumbai and Kolkatta such a writ is heard by a Division Bench, in Delhi High Court such a writ is heard by a Single Judge.
- There is a huge backlog before the Registrar of Trade Marks whereas the decision in a cancellation petition could be faster before the IPAB.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.