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Is using and/or commercializing a registered Trade Mark really necessary in India or is simply sitting over it and renewing the same periodically enough to maintain the mark and gain from the protection it accords. Poorva Khandekar, an intern at Khurana & Khurana and 4’th year law student from KIIT Law School, Bhubaneswar explores the nuances of use of a registered mark in view of Section 47 of the Indian Trademarks Act, 1999.
We presently live in an era where time is money and therefore loss of time is equal to loss of money. I begin this piece of writing with this mundane phrase as it might turn out to be of specific interest to persons (artificial and natural) who lose money on unnecessary trademark litigations which could have been avoided, to a certain extent.
Section 47 of the Trademarks Act of 1999 puts forth two interesting scenarios regarding removal of a registered trademark from the trademark register. Under 47(1)(a), if it is proved that the trademark was not registered with a bona fide interest and was not put into use three months prior to the date of application then the trademark may be removed from the register.
Clause 2 of the same section discusses about removal of trademark in case it is left unused for a period of at least five years. This period is calculated from the date of registration upto three months before the filing of application for removal.
The problem area that we have identified today is significant but avoidable. While filing the form TM-1 (the details about the trademark), the status of use of the trademark is to be mentioned. Many of the trademarks are registered as “proposed to be used” as allowed by section 46 of the Act. This information is available to everybody and is generally relied upon by people. As mentioned above, if the mark is not put to use within five years then it can be removed from the register.
Looking through a few recent (or, fairly recent) cases on these points will help us get a clearer picture of the scenario. To begin with, it is essential to understand the meaning awarded to the word “use” in section 47. In a case of Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., the Supreme Court laid down that the word ‘use’ may encompass actions other than actual sale of goods or services. The intention to abandon the trademark has to be established by the party who approaches the court for removal of the mark from register. In some other cases the Apex Court has observed that the mere presence of a mark in the register does not by itself prove its use at all. Also, the court has categorized promotional activity in India as a pre-cursor of the market reputation without having effected sales of the products in this country. These endorsements were given the status of validity for proving the knowledge of reputation to the other party and the dishonest intention thereof.
In a Delhi High Court judgment of Pfizer Products Inc. vs Rajesh Chopra, the plaintiffs filed a suit for infringement and passing off action on the defendants. In the instant case the propriety rights of a drug sold under the name of “Geodon” were challenged. The plaintiff registered the same in India on 18th July, 1996. The defendant, on the other hand, claimed proprietorship of ‘Geodon’ and use of the mark since 1st of June, 2003. One of the major contentions of the defendants was that the plaintiffs have failed to show use of the trademark since the registration and hence the mark is liable to be struck off from the register so as to leave a room for the defendant to market his product under the trademark. The balance of convenience favoured the plaintiff as it is a global player, selling the drugs by this name in more than 40 countries. Though, sale of those drugs in India could not be established, the importance of copying the trademark of such a global product in the field of medicine was established. Hence the trademark was not removed from the register.
In Vishnudas Trading as Vishnadas Kishendas Vs. Vazir Sultan Tobacco Co. Limited, the Supreme court laid down that “a trader or manufacturer who is trading in or manufacturing only one or some of the articles or goods under a trade mark and has no bona fide intention to trade in or manufacture the other articles or goods falling under that class but has obtained registration of its trade mark under that class which covers several other articles or goods, held, registration liable to be rectified by confining it to the specific articles or goods which are actually intended to be traded in or manufactured.” In the instant case, the application was filed to limit the use of trademark “Charminar” to the manufactured class of cigarettes. The registration was obtained in zarda and quiwam too, in which the applicant wished to use the trademark. The court applied the provisions of non-use and ordered rectification in the register.
In another case decided on 6th January 2012, a trademark of a company “Kellogg Company” possessing global recognition was directed to be removed by IPAB for non-use for 22 years. The appellants claimed that their products were basically chewing gum, bubble gum and dairy products which were not likely to cause confusion in the minds of consumer for the products of breakfast global giant “Kellogg”.
After scrutiny of these cases, we have a few suggestions to make. If you are a trademark owner, then the time to change the status of your trademark from “proposed to be used” to used shall depend on these few factor:
- You have started popularizing your products/services, though the manufacturing has not yet started.
- You have started proceeds relating to establish a market, like- hiring an authorized agent for marketing, etc.
For the purpose of initiating this change in the register, Form TM-16 has to be submitted along with a fee of Rs. 500 to the Trademark Registry. If you wish to initiate this change in someone else’s trademark then resort to Form-26 which has to be submitted with a fee of Rs.3000.
Thus, filing of this change (by Form-16) may result in enabling information to other parties who wish to take you to the court of law for “non-use” of the registered trademark even though it is already being used. Hence, saving your time and the time of court which spent on litigations pertaining to non-use.