Procedures to Cancel the Trademark Application in India

calendar28 Jan, 2021
timeReading Time: 5 Minutes
Cancellation-of-Trademark Application in India

Once any of the brands get registered its trademark, that particular brand can take back its Trademark Application, and after that, the brand has no legal right on that trademark, and the mark will be open in the market for other brands. In this article, we have put light on the procedure to cancel the trademark application.

Trademark registration provides you many benefits and protects brand marks from infringement. The brand can use trademarked for branding, communication & marketing. It helps to protect its brand name in the market.

Procedure to Cancel Trademark Application

After filing for a trademark application, the registration process takes 6 to 7 months for registration, and during that period, you can change your mind and withdraw the trademark application as well. In case you think that you would not be using the trademark in the future for your brand, in that case without a second thought, you can go through with Procedure to cancel the trademark application.

A second trademark application is to be submitted for withdrawal, and this can be done through online submission. However, note that trademark application withdrawal means that you would surrender your legal rights, where other businesses can claim the same.

Read our article:A Trademark Application for Foreign Nationals: Is it Possible in India?

Admissible Amendments under the Regime of Trademarks Act, 1999

Below mentioned are the admissible amendments under the Trademarks Act, 1999, which are as follows:-

  • Alteration in the name, address, or description of the registered proprietor.
  • To cancel the entry of a trademark on the Register
  • Amendment in the user data
  • Amendment in the specification of goods or services.

Persons who can Follow the Procedure to Cancel the Trademark Application

  • A person who is not happy with the trademarked benefits can go through with the procedure to cancel the trademark application.
  • A person who is engaged in the trademark registration can fulfill the procedure to cancel the trademark application on the grounds provided under the Trademark Act, 1999.
  • The trademark registrar can cancel the trademark application voluntarily if the specified brand mark is not registered yet or when there is no renewal after completing 10 years of the trademark.
  • As per section 58 of the Trademark Act 1999, the registered proprietor can legally get cancel the trademark application from the register.

Conditions for Withdrawal of Trademark Application

Section 47, 50 and 57 of the Trademark Act, 1999 talks about the grounds on which individual can withdraw the trademark application, which are as follows :-

  • Trademark has no bonafide use for five years from the date of its registration, and such period of five years has completed.
  • A registered trademark is used in such a way that it misleads or makes confusion among the people.
  • The proprietor has misrepresented or failed to present any material facts related to it in the trademark application for registration, which, if properly disclosed, would not justify such registration.
  • Any alteration or Change in the condition of the brand have been noticed after registration that its registration is not validated.
  • When there is a condition provided in the Register of Trademarks regarding any violation or failure to observe it, any person can file for cancellation of registration.

Which Authority Cancels the Submitted Trademark Application?

The Trademark application for cancellation is submitted under whose jurisdiction a trademark registration takes place i.e. the Registrar or the Appellate board. The registrar is the appropriate authority for the trademark application for its cancellation. Simultaneously, Intellectual Property Appellate Board is the Appellate Board for Trademarks in India. Authority can cancel the trademark once they find that the applicant has fulfilled the procedure to cancel the trademark application

The Trademark Appellate Boards’ office is situated at five places in India, i.e., Chennai, Delhi, Mumbai[1], Kolkata, and Ahmadabad. The said request for cancellation is either given to the Registrar or Appellate Board.

Procedure to Cancel the Trademark Application under Trademark Act, 1999

In case the applicant wants to withdraw the application for the trademark voluntarily. It has been submitted online, and the status for the same in the Indian Trademark Registry is viewed and marked online as ‘withdrawn’ Registrar of the trademark.

But sometimes the said application could also be withdrawn if the Hearing Officer or Trademark Officer has failed to accept the trademark application. Withdrawal effectively denotes that the application will not affect, and is treated as cancelled.

  • After the cancellation application is made to either the Registrar or the Appellate Board, the authority will send a notice to the concerned parties, i.e., the owner of proprietor of registered trademark.
  • The concerned parties can file counter statements against the application before the Registrar.
  • A chance is given to both parties to defend themselves, and the burden of proof lies on them. 
  • Both parties have the right to file pieces of evidence and hearing their cases will occur.
  • After successful hearing and scrutinizing of the evidence furnished by both parties, the order shall be passed.
  • In case the Registrar makes an order of cancellation on the cases presented before him, he shall execute it by removing the trademark from his register.
  • The order passed by the Registrar can be made to the appellate before the Appellate Board.
  • If the application is before the Appellate Board directly, they should follow the same procedure as that of Civil matters in the court.
  • Civil court procedure is similar as it is followed in the Registrar of the Trademark.
  • In case the Appellate Board passed an order for cancellation, then intimation for the same shall be conferred to the Registrar to cancel the trademark.
  • A writ petition to the High Court can be filed  against the order passed by the Appellate Board.

On what Grounds an Applicant Faces an Objection for Trademark Application?

If an applicant made a trademark application to the authority, he might face such an objection from the trademark officer when examining such application; or an opposition made by the other interested parties when the applicant trademark is advertised in Trademarks Journal for a fresh enrollment.

  • When an applicant receives a notice of objection or opposition, it requires filing a counter statement for the same before the registrar within a specified time limit.
  • Opitonally, he may  also withdraw his application voluntarily by using the online withdrawal application form.
  • Once the specified time limit expired and there is no such  response given to the examination report or opposition notice, it’s firmly believed  that the applicant  is not interested in carrying forward the trademark registration
  • This automatically will lead to the abandonment of the trademark application and usually no extension provided by the authority in such situation.

Specific Forms Subject To Trademark Application Cancellation

Specific Forms Subject To Trademark Application Cancellation

The Trademarks Rules, 2017, provides the forms that must be submitted before the Registrar for trademark application cancellation. The trademark application is accompanied by these forms for submitting cancellation to the Registrar. The below-mentioned are the said form for trademark application cancellation.

Form TM-O

This is the form of canceling a trademark application on the conditions provided under Section 47 and 57 of the said Act.

Form TM – U

This is the form for a trademark application for removal of entry of a trademark under the condition in Section 50 of the said Act.

Concluding Remark

Under the subjected trademark act, the cancellation of the trademark application is also provided, and the held responsible authority is also embodied with their procedural norms. When applying for such cancellation, either the applicant could apply before the trademark registration or application before the Appellate board.

The concerned authorities shall circulate a notice related to such objections against the related opposite parties and ask for their statement on the issue. After vivid hearing and proper examinations, the concerned authority shall pass an order and oblige to execute it further in the interest of law and justice. You may kindly associate with the Corpbiz to know more about the procedure to cancel the trademark application.

Read our article:Trademark Litigation on Infringement & Passing-Off: Things you must Know!

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