Trademark & Its Registration
A Trademark in simple terms is a design or logo applied to articles of commerce to give distinctive feature to its product from another. In short, it is a mark capable of giving a distinctive sign or an indicator to the product of an individual or an organization.
“According to Section 2(zb) of Trademarks Act, 1999 essential elements of a valid trademark are:-
Mark capable of graphical representation
Which is capable of distinguishing goods or services from others
Can include shape of goods, their packaging, & combination of colors.”
In Accordance to the Trade Mark Act, 1999 a trademark can be registered or unregistered. Chapter III of the Act which includes Sec 18 to 26 states various provisions for Procedure and Duration of Registration. However, trademark once registered needs to be renewed otherwise such trademark would be removed. In addition to above, trademark also stands to be removed upon non use of the registered trade mark by the registered proprietor.
Section 47 – Removal from register and imposition of limitations on ground of non use of Trade Mark:
In accordance to Section 47 of the Trade Marks act, a Trademark once registered can be removed or taken off from the register upon application to concerned body on either of the following grounds:-
No valid intention existed to Use the trademark: An application for removing trademark can be made by any person on the ground that the trade mark was registered by proprietor without any intention to use such trademark in relation to those goods or service.
In addition to above there should be no bona fide use of the trade mark in relation to those goods or services since three months before the date of such application under this section.
Or
No use of Trademark by proprietor for 5 years or longer from registration:- A registered trademark can be removed from the register if it has not been used by the proprietor for a continuous period of five years or more relation to those goods or services.
Under these provisions 5 year period is calculated from the date from which the Trademark is actually entered in the register.
However, an exception to this rule exists that if special reasons have been proved by the proprietor for non use of trade mark such as restriction imposed by law and not with any intent to not use the mark, then such Trade mark will not be removed from the register.
Landmark Judgment of Section 47
The Hon’ble Supreme Court in the Kabushiki Kaisha Toshiba v. TOSIBA Appliances (2008) held that “The intention to use a trade mark sought to be registered must be genuine and real.” The division bench further explained that “when a trade mark is registered, it confers a valuable right. It seeks to distinguish the goods made by one person from those made by another. The person, therefore, who does not have any bona fide intention to use the trade mark, is not expected to get his product registered so as to prevent any other person from using the same.”
For the purpose of this section mere advertising without actually marketing any goods or services cannot amount to genuine use of the trade mark.
In some circumstances the registered trademark’s use on internet or website may amount to genuine use. However, the offer for goods or services on internet will be considered valid if exists along with the ability to supply the goods or services in India.
Conclusion
Thus, a registered trade mark “must be used in relation to those goods or services” for which it was registered to prevent its removal from the register in accordance to Section 47 of the Trademarks Act.
