Non-Use Cancellation Actions in India
Indian trademark law allows for the cancellation of a trademark registration if, for a continuous period of five years and three months from the date on which the mark was entered into the Trade Marks Register, there has been no bona fide use of the trademark for the goods/ services covered by the registration.
Courts have, over the years, through numerous judgements, settled the definition of “use” in relation to cancellation actions. Thus, a trademark is considered to be in use if it is used on goods (say on packaging or on the good itself) or in relation to services (say in promotional material relating to a service). However “use” also encompasses actions other than actual sale of goods or rendering of services. For instance, it would be sufficient if a party can demonstrate that it has taken a “preparatory step” to use the mark in India. For instance, Indian courts have held that pre-use advertisement of a mark in India will also constitute as “use” in order to defend a cancellation action.
All along, however, it has been amply clear that use made merely to preserve rights in a mark would be insufficient to ward off a cancellation action. Thus, use must be significant, commercial use of the mark on or in relation to the goods/ services. Given this, even a single incidence of commercial and bona fide use in India during the relevant period is sufficient to successfully defend a cancellation action against a trademark registration.
As noted above, a trademark registration becomes vulnerable to a cancellation action if a trademark has not been used for a continuous period of five years and three months from the date of entry into the Trade Marks Register. The date of entry into the Register is the date on which the Certificate of Registration was issued. However, to ensure that a registrant’s rights are not jeopardized, Indian courts have ruled that, while a registration may be vulnerable to cancellation once a period of five years and three months has elapsed from the date on which the Certificate of Registration was issued, a cancellation petitioner must, in order to succeed in the cancellation action, show that there has been no use of the trademark in the five years and three months preceding the filing of the cancellation action. By way of example, if a Certificate of Registration was issued for a trademark registration in January 2005, it will be vulnerable to cancellation on the ground of non-use in April 2010 if there is no use of the trademark. However, if a cancellation application is being filed only in September 2019, then in order to succeed in a cancellation action, the petitioner has to show that the trademark has not been in use in the period June 2014 to June 2019. Any non-use of the trademark prior to the June 2014 to June 2019 period is irrelevant for the purposes of a cancellation action on the ground of non-use.
From the above, it is clear that bonafide proprietors can rest easy in the knowledge that their rights in their registrations cannot be invalidated without reason.