It is proved that the trademark was registered without any bonafide intention of use on part of the owner. More often than not, as part of trademark searches that we conduct, we come across many applications which have been filed in all the 45 classes when the mark is actually used for one or two classes only. This is a defensive registration and the Court has held in various cases that such registrations should not be encouraged.
if the trademark hasn’t been used for a continuous period of 5 years from the date of registration of the mark and three months prior to filing the application for registration. So in effect, if the mark has not been used for a period of 5 years and 3 months, then any aggrieved person may file for rectification proceedings. In India, Section 47 of the Trademark Rectification lays down two scenarios regarding removal of a registered trademark
So in the first type of case if a person can show that the applicant had no intention of actually using the mark, they can file a petition to cancel the mark, and in the second scenario, even if there was some initial usage, for a continuous period of 5 years after registration of the mark, if the mark had not been used an application for rectification can be filed.
Who can file for rectification of the register?
Any aggrieved person may file for rectification of the register on grounds of non-use of the trademark. Though the meaning of “aggrieved persons” hasn’t been explicitly defined in the act, it has however been interpreted by the Courts to mean persons who are in some way or the other substantially interested in having the mark removed from the register or persons who would be substantially damaged if the mark remained
So an aggrieved person includes person who believes that he is being damaged by the registration; someone who has an earlier pending trademark for the same mark; the owner of an earlier registered trademark; basically, any person who is in some way or other substantially interested in having the mark removed and includes persons who are substantially damaged or prejudiced if the mark remained on the register.
How to file a rectification proceeding in India?
An application for rectification can either be made before the Registrar or the Appellate Board. An order passed to File Trademark Rectification in India is appealable within 90 days to the IPAB which is not appealable. In order to challenge this order, a writ petition can be filed before the High Court. If the application is directly filed before Appellate Board, it can then be challenged by filing a writ petition in the High Court.
Apart from submitting the prescribed forms and the fees the application is to be accompanied by a statement of case which basically sets out the nature of applicant’s interest, facts upon which the case is based and the relief sought for.