Removal Of TradeMark From TradeMark Register Due To Non-Use

31st July, 2020 - 12:24 pm Categories: Trademark 0 Comments

Introduction

Section 47 of the Trade Marks Act, 1999[1] deals with the removal of the trade mark from the trade mark register on the ground of non-use and imposition of penalties thereof. An application under Section 47 of the act can be made by any aggrieved person to the Registrar or the Appellate Board for the removal of the trade mark (also called as rectification of register) in respect of the goods or services in respect of which it is registered. An applicant is required to show any of the following grounds:

1. The trade mark was not registered with any bona fide intention on applicant’s part to use that mark in respect of the goods or services for which it was registered, or in any case, where the provisions of Section 46 is applicable, by the company concerned or the registered user, as the case may be and there has been no use of the trade mark by any person up to at least three months before the date of the application; or

2. That a period of five years starting from the date of registration of trade mark till three months before the date of the application has been elapsed during which the trade mark was not put to any bona fide use in relation to the goods or services in respect of which it was registered.

However, if an applicant has been permitted under Section 12 of the Trade Marks Act, 1999 (deals with registration in case of concurrent use) to register an identical or nearly resembling trade mark in respect of the goods or services in question, or whereas per the opinion of the trade mark, the applicant might be permitted to register such trade mark, the tribunal may reject such application for removal of trade mark if it is shown that there has been a bona fide use of the trade mark by any proprietor in respect of the goods or services in question, or goods or services of the same description during the relevant period.

Section 47(3) of the Trade Marks Act, 1999[2] creates an exception to the provisions contained in Section 47(1) and (2). The registered trade mark will not be taken off from the register of the Registrar if the non-use of the mark is a result of any special circumstances in the trade and not of any intention to abandon the mark or not to use the trade mark in relation to the goods or services in respect of which it was registered. Here, the special circumstances include restrictions on the use of the trade mark in India imposed by any law or regulation.

In the case of Euro Panel Products Private Limited vs. Eurobond Industries Pct. Limited[3], it was held that the non-use of any trade mark by the proprietor subsequent to its registration does not by itself render the mark incorrect, but gives a right to the aggrieved person to file an application for rectification of register by removal of the mark.

Conditions which are required to be satisfied for the removal of Trade Mark

The conditions which must be satisfied before a trade mark can be taken from the register of the Registrar on the ground of non-use was discussed in the case of Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd.[4]as follows:

1. The application was filed by an aggrieved person.
2. The trade mark has not been used by the proprietor for a continuous period of at least five years and one month prior to the date of the application (three months as per the Trade Marks Act 1999);
3. There were no special circumstances as a result of which the proprietor failed to make use of the trade mark during the relevant period.

Meaning of Use

As per Section 2(2)(b) of the Trade Marks Act, 1999,[5] any reference to using the trade mark shall be construed as a reference to the use of printed or other visual representation of the mark. Further, Section 2(2)(c) of the Trade Marks Act, 1999[6] states that in relation to goods, the use of the mark shall be construed as a reference to the use of the mark upon, or in physical or in any other relation whatsoever, to such goods. In relation to services, the use of the mark shall be construed as a reference to the use of the mark or as any statement about the availability, provision, or performance of such services.

Meaning of an Aggrieved Person

The meaning of an aggrieved person has not been defined anywhere in the Trade Marks Act, 1999, however, in the case of Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd,[7]the court has interpreted the meaning of an aggrieved person to mean persons who are in some way or other substantially interested in having the mark removed from the register or persons who would be substantively damaged if the mark remained in the register. Therefore, an aggrieved person may include a person who would suffer damage if the mark is not taken off from the register; a person who has filed an earlier pending registration application for the same mark; the owner of an earlier registered trade mark; or any other person having substantial interest in the removal of the trade mark. An applicant is required to show sufficient reasons for applying to have the trade mark expunged.

In Hardie’scase, the court made the distinction between the meaning of aggrieved persons used under Section 46 and Section 56 of the Trade and Merchandise Marks Act (corresponding to Section 47and Section 57of the Trade Marks Act, 1999). The court held that the person aggrieved for the purpose of removal of the mark from the register on the ground of non-use under Section 46 (Section 47 of the Trade Marks Act, 1999) has a different connotation from the phrase used in Section 56 (Section 57 of the Trade Marks Act, 1999) for rectifying the register. The same interpretation was upheld by the court in Infosys Technologies Ltd v. Jupiter Infosys Ltd. &Anr.[8]

In another case of Aktiebolaget Jonkoping Vulcan vs V.S.V. PalanichamyNadar And Ors, [9] the Delhi High Court held that an application for removal of trade mark on the ground of non-use can be filed by a person whose application for registration of trade mark has been refused because of the existence of prior registration of the similar or identical mark by the respondent in respect of the same goods or services in question and that person will be regarded as an ‘aggrieved person’.

 Burden of Proof

When the application has been filed by the aggrieved person for removal of trade mark, then the burden of proof is on the application who has filed such an application to show non-user for the relevant period. Once the applicant is able to show the non-user of the mark by the proprietor and fulfils the condition mentioned under Section 47(1) of the Trade Marks Act, 1999, then the burden shifts to the proprietor of the trade mark.[10] If the registered proprietor of the trade mark claims an exception under sub-section (3) of Section 47 (special circumstances), then the burden of proof lies on the proprietor who is claiming the benefit of the exception.

In the case of Cycle Corporation of India Ltd. v. T.I. Raleigh Industries (P) Ltd.[11], it was held that if a registered proprietor is claiming an exception of special circumstances, then the burden lies on the proprietor that the non-use of the trade mark is due to special circumstances and not due to some other cause which would have operated, whether the special circumstances have arisen or not.

Important Case Laws

American Home Products Corporation v. Mac. Laboratories (P) Ltd.[12]

Facts: In this case, the appellant American Home Products Corporation is an MNC, engaged in the manufacturing and marketing of pharmaceutical products and drugs. In 1956, the appellant introduced a drug for symptomatic relief for cold and congestion under the trade mark ‘DRISTAN’. The appellant company holds the registration of trade mark under the name ‘DRISTAN’ in approximately 39 countries. Later in 1958, it entered into a technical collaboration agreement with Geoffrey Manners & Co. Ltd, (hereinafter referred to as “Indian Company”). Through this agreement, the appellant agreed to provide the formulae, manufacturing technology and any other assistance to the Indian Company to effectuate the sale of ‘DRISTAN’ tablets in India. After the registration of the mark ‘DRISTAN’ in India, the Indian Company obtained a licence from the appellant and started importing machines to manufacture the tablets, procured the samples of the tablets from the proprietor.

During this time when the manufacturing of ‘DRISTAN’ tablets has not commenced in India, one Mac Laboratories Private Limited, the Respondent in the present case, filed an application before the registrar for the registration of the mark ‘TRISTINE’ in class 5 to be used in respect of drugs for symptomatic treatment of respiratory ailments. The appellant company filed a notice of oppositionagainst ‘TRISTINE’ mark of the respondent company on the ground that the ‘TRISTINE’ is deceptively similar to the mark of the appellant company ‘DRISTAN’. The opposition notice filed by the appellant was not accepted by the Registrar and the registration was granted to the mark of the respondent company. Against, this order of the Registrar, the appellant went into an appeal to the Bombay High Court where ultimately, the single judge bench granted the order in favour of the appellant and cancelled the registration of the trade mark of the respondent. Later, the respondent company filed an application for rectification in order to remove the mark ‘DRISTAN’ from the register. It was the contentions of the respondent company that the appellant company has no bona fide intention to use the trade mark and on the same ground, it should be expunged from the register.

When the rectification proceedings were pending, the Indian Company and the appellant company entered into a registered user agreement and filed an application with the Registration for registration of Indian Company as a registered user of the trade mark of the appellant company. In this matter, the following question came up before the High Court

Whether a proprietor of a trade mark who intends to use it solely by a registered user is entitled to registration of his trade mark under Section 18 of the Trade and Merchandise Marks Act, 1958?

The matter was then referred by the High Court to the Supreme Court with the above-mentioned question as the matter is of considerable importance to the foreign proprietors of trade marks, to registered users of trade marks in general and to the Industry and Commerce at large.

Held: In this case, the Supreme Court dismissed the rectification application of the Respondent and held that the appellant company is entitled to the registration of the mark ‘DRISTAN’. The decision of the court was based on the fact that though the manufacturing of the ‘DRISTAN’ tablets has not commenced in India, the Indian Company (registered user of the trade mark) has already made sufficient arrangements to manufacture the tablets in India. By this case, the Supreme Court allowed the registration of the mark even in the case when the intention of the proprietor is not to use the trade mark himself but to use it solely by a registered user. Further, the court held that for showing an intention to use, the proprietor need not show the marketing of the goods under the trade mark.

Author: Pratiksha Rawat, a student of Amity Law School, Delhi, GGSIPU (Batch 2016-21), intern at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1]The Trade Marks Act, 1999 § 47.

[2] Id. § 47(3).

[3]Euro Panel Products Private Limited vs. Eurobond Industries Pct. Limited, 2016 (67) PTC 539 (Bom), p. 549.

[4]Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92.

[5]The Trade Marks Act 1999 § 2(2) cl. b.

[6]Id. § 2(2) cl. c.

[7]Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92.

[8]Infosys Technologies Ltd v. Jupiter Infosys Ltd. &Anr.(2011)1SCC125.

[10]Satnam Overseas v. Sant Ram & Co., 2014 (57) PTC 220 (SC) at p. 224.

[11]Cycle Corporation of India Ltd. v. T.I. Raleigh Industries (P) Ltd., (1996) 9 SCC 430.

[12]American Home Products Corporation v. Mac. Laboratories (P) Ltd., AIR 1986 SC 137.