As crucial identifiers of an organisation’s goods or services, trademarks are fundamental resources. Trademarks are safeguarded by regulation whenever they have been enrolled, giving their proprietors the primary position to involve the imprint in business exchanges. Be that as it may, the most common way of testing a brand name’s legitimacy gets progressively troublesome following five years of uncontested enrollment. A top-to-bottom examination of the legitimate climate and likely procedures for questioning brand name legitimacy are canvassed in this blog, which likewise looks at the intricacies of testing trademark rights over the past five years of enrollment.
Who Can Challenge Trademark Registration in India?
Different organisations in India have the right to contest trademark registration based on particular justifications. The ability to contest the registration of a trademark in India is available to the following parties:
Any aggrieved person:
Any person who is impacted or expected to be impacted by registering a specific trademark is referred to here. This individual has the right to contest the registration of a trademark on a number of grounds, including prior use, resemblance, or any other pertinent concerns.
Any person claiming to be the proprietor of a prior trademark:
A person may contest the registration of a later trademark rights on the grounds of prior use and likelihood of confusion if they assert ownership of a trademark that was either already in use or registered before the trademark in question.
The Registrar of Trademarks:
If the application does not meet the statutory requirements or if there are any problems with the application, the Registrar may also raise objections during the trademark registration procedure.
The Trademark Board:
The Trademark Board can be reached for a goal in the event that the brand name has been enrolled and an outsider has stopped a debate or grumbling. Contingent upon the benefits of the case and the supporting documentation, the board has the ability to repudiate or revise a brand name’s enlistment.
How to Challenge Trademark Rights After Five Years of Registration
The legitimate cycle for challenging a brand name in India following five years of enrollment is muddled. Notwithstanding, there are arrangements in the Trade Marks Act of 1999 that licence the undoing or rectification of an enrolled brand name on unambiguous grounds even after the five-year point. After a trademark has been enlisted in India for a considerable length of time, the common methods and defences for doing so are as per the following:
Grounds for Challenging a Trademark:
A registered trademark rights may be contested on a number of grounds, such as:
- Without having any legitimate intentions, the trademark was registered.
- Incorrectly, the trademark was still listed in the register.
- There hasn’t been any steady utilisation of the brand name for quite a long time, and there’s no great explanation for why.
- The logo isn’t unmistakable in any capacity
- The brand has lost its distinctiveness.
- The trademark and an earlier registered trademark are likely to be confused by consumers.
- The trademark violates morals or public policy.
Consultation with a Trademark Attorney:
It is recommended to speak with a skilled trademark lawyer who can assist you with the legal procedure and give you sound legal counsel based on your unique circumstances.
Filing a Petition for Cancellation or Rectification:
You must submit a petition to India’s Intellectual Property Appellate Board (IPAB) in order to contest a trademark. The grounds for the requested cancellation or rectification must be included in the petition.
Proving Non-Use of Trademark Rights:
You must gather proof to show that the registered trademark has not been consistently used for a period of five years without a valid reason if the basis for contesting the trademark is non-use.
Legal Proceedings and Hearing:
Following the petition’s filing, the IPAB will hear the case and conduct court procedures. Effectively presenting all of your points and supporting evidence during the hearing is crucial to winning your case.
Appeal Process:
Assuming you can’t help contradicting the IPAB’s decision, you might interest the High Court and afterwards, if fundamental, the High Court.
Dropping on the Grounds of Non-utilisation of the Registered Trademarks
The demonstration of eliminating a brand name from the authority vault because of the proprietor’s inability to involve the brand name for a foreordained measure of time is known as retraction on the grounds of non-utilisation of a registered trademark. Contingent upon the country or purview, there might be various prerequisites and cycles for scratch-off on different grounds.
Non-Use Period:
A registered trademark rights must be utilised within certain time frames in many jurisdictions in order to keep it registered. The trademark may be subject to revocation if the owner fails to use it in connection with the registered products or services continuously for a time period longer than required.
Application for Cancellation:
The majority of the time, a third party or rival can submit an application to have a registered trademark cancelled due to non-use. Typically, the application needs to be backed up by proof that the trademark rights was not used throughout the specified time frame.
Burden of Proof:
The party requesting cancellation frequently has the burden of demonstrating non-use. This usually entails presenting proof, such as a lack of sales, a lack of marketing efforts, or any other material indicating the registered trademark’s non-commercial use.
Defences:
By proving the actual use of the brand during the required time, the trademark rights owner may be able to fight the cancellation action. Evidence supporting the use of the trademark in commerce, such as sales data, advertisements, invoices, or other paperwork, can be used to prove this.
Jurisdiction-specific Procedures:
For addressing cancellation proceedings based on non-use, various nations have their own distinct policies and regulations. To comprehend the exact procedures and requirements that apply, it is important to check the applicable laws and regulations in the particular jurisdiction.
Conclusion
After five years of registration, challenging trademark rights is a difficult legal process that needs careful preparation, strong supporting documentation, and a thorough understanding of the pertinent legal environment. Although it may appear difficult, proving non-use, genericism, or invalidity can be effective tactics for challenging a trademark’s legality. Individuals and companies can take the required actions to protect their rights and interests in the trademark world by navigating the complex legal system and making use of earlier judicial decisions.
