Someone wants our unused trademark removed: what you can still do

You registered a trademark. Then the business moved on, or the launch slipped, or one product line was dropped. Now a letter or a Registry notice says someone has applied to take your mark off the register because you have not used it.

This is a real risk, but not the end. This article explains who can apply, what they must prove, and what you can do by when.

The situation: what "removal for non-use" means

A registered trademark can be taken off the register for the goods or services it covers. Any "person aggrieved" can apply, either to the Registrar or to the High Court (s.47(1), Trade Marks Act 1999). The Act does not define "person aggrieved". A competitor whose own plans are blocked by your registration is the obvious candidate, and your adviser can tell you how courts have read the phrase.

The Act gives two grounds.

Ground one: no real intention to use. The mark was registered without a bona fide (genuine) intention that the applicant would use it for those goods or services, and there has in fact been no genuine use by any owner up to a date three months before the application (s.47(1)(a), Trade Marks Act 1999).

Ground two: five years of non-use. Up to a date three months before the application, a continuous period of five years or longer had passed from the date the mark was actually entered in the register. During that time there was no genuine use in relation to those goods or services by any owner (s.47(1)(b), Trade Marks Act 1999).

Put simply, the five years run from the day the mark was entered in the register, and the window closes three months before the application date. The Act has no phrase "five years and three months"; that is shorthand for this counting. Check both dates on your own registration.

The removal can be for some goods or services only. The Act speaks of the mark being taken off "in respect of the goods or services" in question (s.47(1), Trade Marks Act 1999). If you use the mark on two products and have registered it for ten, the other eight are the exposed ones.

What you can still do today

You have several answers. Which one fits depends on your facts.

1. Show genuine use. If you used the mark in the window, say so, with proof. Use of the mark on or in relation to goods counts (s.2(2)(c)(i), Trade Marks Act 1999). For services, using the mark as part of a statement about the availability, provision or performance of the services counts (s.2(2)(c)(ii), Trade Marks Act 1999).

2. Rely on use by someone else with your permission. Permitted use by a registered user is treated as use by you, the owner (s.48(2), Trade Marks Act 1999). If a licensee or group company used the mark under a registered arrangement, that use may protect you. The same clause says the permitted use counts "for the purposes of section 47".

3. Show use on similar goods or services. The Registrar or the High Court may refuse the application if there has been genuine use by any owner of the mark for goods or services of the same description, or for goods or services associated with them (proviso to s.47(1), Trade Marks Act 1999). Goods and services are "associated" if the same business might sell or provide them (s.2(3), Trade Marks Act 1999). There is a caveat in the proviso. It does not help where the applicant has been permitted under s.12 to register an identical or nearly resembling mark, or where the decision-maker thinks he might properly be permitted to.

4. Show special circumstances in the trade. For the five-year ground (clause (b)), the applicant cannot rely on non-use that is shown to be due to special circumstances in the trade. That includes restrictions on use of the mark in India imposed by any law or regulation. It must not be due to any intention to abandon or not to use the mark (s.47(3), Trade Marks Act 1999). A pending licence, a stalled launch or a lack of funds will rarely fit this. A legal bar on selling the product might.

5. Challenge the applicant's standing and the dates. The applicant must be a person aggrieved, and the five years must be continuous and correctly counted.

6. Limit the damage. If you cannot show use for every item in your specification, concede the items you will never use and defend the rest. That is often better than losing the whole registration. Keep that decision for your adviser. It depends on your plans for the brand.

The clock that matters: what the Rules give you

The procedure is in Rules 97 and 98 of the Trade Marks Rules 2017. Read these dates carefully, because they are short.

• Application. An application under s.47 or s.57 is made in Form TM-O, with a statement setting out the applicant's interest, the facts and the relief sought. It is verified in the way a notice of opposition is verified (rule 97, Trade Marks Rules 2017).
• Copy to you. The Registrar ordinarily transmits a copy of the application and statement to the registered proprietor within one month (rule 97, Trade Marks Rules 2017).
• Your counterstatement. Within two months from receipt of that copy, or within a further period not exceeding one month in aggregate, you send the Registrar a counterstatement on Form TM-O. It sets out the grounds on which the application is contested (rule 98, Trade Marks Rules 2017).
• If you file nothing. If no counterstatement is filed within three months from the date of receipt of the application, the applicant files evidence in support (rule 98, Trade Marks Rules 2017). A mark you do not defend is a mark you are likely to lose.

So the working clock is two months, with at most one more month if you ask for it. Count it from the day the copy reached you, not from the day the applicant filed. Keep the courier slip, the email or the portal notice that shows the date of receipt.

Once pleadings close, the evidence stages of rules 46 to 51 apply "mutatis mutandis", which means with the necessary changes (rule 98, Trade Marks Rules 2017). Those stages work as follows.

• Evidence is by affidavit. An affidavit is a sworn written statement (rule 46, Trade Marks Rules 2017).
• The party who files an affidavit must give copies to the other side. The other side then has one month to file evidence in reply (rule 47, Trade Marks Rules 2017).
• No further evidence is allowed, except with the Registrar's leave (rule 48, Trade Marks Rules 2017).
• The Registrar gives notice of the first hearing, at least one month ahead (rule 50(1), Trade Marks Rules 2017). A party may ask for an adjournment, but no party gets more than two. Each may not exceed thirty days (rule 50(2), Trade Marks Rules 2017).

Step by step: defending the application

• Note the date you received the copy. Everything runs from it (rule 98, Trade Marks Rules 2017).
• Pull your registration details. Note the date the mark was entered on the register, the classes and the exact goods or services.
• Collect proof of use. Think of dated invoices, shipping records, price lists, packaging, website captures with dates, advertising, trade-fair material and licence agreements. The proof must show the mark, the goods or services and the date. Anything undated is weak.
• Sort the proof by item. Match each good or service in your specification with a piece of dated evidence. The gaps show you what to concede.
• File the counterstatement on Form TM-O. On the Registry's online system, choose the "Counter Statement" request type under TM-O. State each ground on which you contest the application. Attach annexures.
• Pay the Registry fee yourself. The Trade Marks Rules 2017 list a fee for a counterstatement under the entry covering rectification under ss.47 to 57. It is ₹3,000 for physical filing and ₹2,700 for e-filing, for each class (First Schedule, Trade Marks Rules 2017). You pay this directly to the Registry. No one else collects it for you. This is the figure in the First Schedule as published with the 2017 Rules; check the current figure on the IP India portal before you file, as fees can change by notification.
• Follow with affidavit evidence. Rules 46 to 51 apply to the later stages with the necessary changes (rule 98, Trade Marks Rules 2017). Evidence in reply to the applicant's affidavits is due within one month of receiving them, with copies to the other side (rule 47, Trade Marks Rules 2017). Confirm the exact timetable with your adviser.
• Attend the hearing. Use the adjournment right sparingly. You get two at most (rule 50(2), Trade Marks Rules 2017).

If the other side is in court

Sometimes the non-use attack is not a standalone application. It appears as a defence when you sue someone for infringement. The Act then channels the question. Where the validity of the plaintiff's registration is questioned in an infringement suit, it is decided only on an application for rectification, and that application goes to the High Court and not the Registrar (s.125(1), Trade Marks Act 1999).

If a rectification application is already pending, the court must stay the suit until it is finally decided (s.124(1)(i), Trade Marks Act 1999). If none is pending and the plea is prima facie tenable, it frames an issue and adjourns for three months so the party can apply (s.124(1)(ii), Trade Marks Act 1999). If no application is made in time, the issue is deemed abandoned (s.124(3), Trade Marks Act 1999).

The Registrar may also refer a s.47 application to the High Court at any stage (s.125(2), Trade Marks Act 1999).

After the decision

An order or decision of the Registrar can be appealed to the High Court within three months from the date it is communicated to you (s.91(1), Trade Marks Act 1999). The High Court may admit a late appeal on sufficient cause (s.91(2), Trade Marks Act 1999).

What not to do

• Do not ignore the notice. The counterstatement window is two months, plus at most one more (rule 98, Trade Marks Rules 2017).
• Do not fabricate use. Use only what really happened. Backdated or after-the-notice paperwork will not show use in the window.
• Do not rely on token use. The Act asks for bona fide (genuine) use (s.47(1)(b), Trade Marks Act 1999). Real trade is stronger evidence than a one-off sale.

What to do now

• Next step: find the date you received the copy of the application. Then file Form TM-O (counterstatement) with the Registry (rule 98, Trade Marks Rules 2017).
• Deadline: two months from receipt, or up to one month more in aggregate (rule 98, Trade Marks Rules 2017).
• Consequence if you miss it: if no counterstatement is filed within three months from receipt of the application, the applicant proceeds to file evidence in support (rule 98, Trade Marks Rules 2017). You may lose the registration for the goods or services covered (s.47(1), Trade Marks Act 1999).

Have a CA review your facts before you act or file.

FAQs

Can anyone apply to remove my mark?
The application must come from a "person aggrieved" (s.47(1), Trade Marks Act 1999). A random member of the public is on weaker ground than a rival who is blocked by your registration.

How many years of non-use are needed?
The Act says a continuous period of five years or longer from the date the mark was actually entered on the register, counted up to a date three months before the application (s.47(1)(b), Trade Marks Act 1999). That is why people say five years three months.

Does use by my licensee count?
Permitted use is deemed to be use by the proprietor for the purposes of s.47 (s.48(2), Trade Marks Act 1999). The registered-user route is in s.49. Ask your adviser whether your arrangement qualifies.

Can I lose the mark for only some goods?
Yes. A mark can be taken off the register in respect of the goods or services in question (s.47(1), Trade Marks Act 1999). The rest of the specification can survive.

Who pays the Registry fee for my counterstatement?
You do, directly to the Registry. The listed fee for a counterstatement is ₹3,000 on paper and ₹2,700 online, for each class (First Schedule, Trade Marks Rules 2017). Check the current figure on the IP India portal before you file.

What if the Registrar rules against me?
You may appeal to the High Court within three months of the order being communicated to you (s.91(1), Trade Marks Act 1999).

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See Also

• Someone opposed my trademark application: what to do in the first two months
• Assigning a trademark when we sell the business
• Missed your trademark renewal? How to renew late or restore the mark