A Complete Guide For Cancellation Of A Registered Trademark In India

Cancellation of a registered trademark is a legal procedure in which an aggrieved person seeks to remove the registered trademark form the registry. There is a specific condition for the trademark. The Trademark Act section 47 deals with the trademark eliminating rules.

In India, one can remove the trademark under two scenarios.

• Not using the trademark for 5 years from the actual date of its registration or not using it for 3 months preceding to the time of application registration, about the product or product laid out
• If one has registered the trademark without any intention of actually using it

Any party can file a petition in a prescribed manner seeking recertification of the mark before the Trademark Registry Office. Here in this article, we are going to discuss the cancelation of the registered trademark in India.

Who Can File For Trademark Cancellation Proceeding?

The trademark cancellation request can be file by

• Any person who got affected by the registration or someone who has a pending trademark for the same
• Any person interested in getting trademark removed from the register to fend off the damage if the mark is determined
• The trademark cancellation can not be filed anonymously, the onus of the providing the identity remains on the owner.

Document Required For The Cancellation Of A Trademark

While filling the trademark cancellation request, you need a few essential documents which are

• A cancellation application is to be created in triplicate on the requisite form
• A statement of the case, setting out of the nature of the application’s interest. Facts upon the which the case is based and relief that is sought

How To Cancel A Trademark Registration: Cancellation Checklist

Here is some crucial point which you need to consider while filling a trademark cancellation application.

• Trademark Priority: If the basis of the trademark is the likelihood of confusion, you want to doubly ensure that the priority date of your mark beats more those of the registered marks
• Registration less than 5 years old?: A registration that is over 5-years can not be challenged on specific grounds
• Grounds For Cancellation: Your potential ground for cancellation should be thoroughly analyzed & cross-checked against the petition's timing to cancel, especially if the registration is approaching its 5th anniversary
• Suspend Your Pending Application: If there are any outstanding offices actions in your application citing the registered mark you are seeking to cancel you should timely request that your pending application be suspended pending the outcome of the cancellation
• What potential defenses and counterclaims might the registration owner bring against you?

Ground Of Trademark Cancellation

An aggrieved person can request for trademark cancellation within 5 years of trademark registration or after 5 years of enrollment.

Trademark Cancellation Within 5 Years

• Is deceiving the public
• Creates confusion within the business
• Is too descriptive
• Just a geographically descriptive
• If the application does not defend it for at least 3 years

Trademark Cancellation After 5 Years

• The trademark becomes too generic
• If the proprietor registered it with fraudulent means
• The trademark contains obscene things
• It is disparaging 

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Abhishek Kumar