Romer J. said in the case of Registered Trademarks of John Batt & co. and In Re Carter’s Application for a Trademark “one cannot help seeing the evils that may result from allowing trademarks to be registered broadcast, if i may use the expression, there being no real intention of using them, or only an intention probably of using them in respect of a few articles. The inconvenience it occasions, the cost it occasions, is very large, and beyond that cannot help seeing that it would lead in some cases to absolute oppression, and to persons using the position they have obtained as registered owner of trademarks (which are not really bonafide trademarks) for the purpose of trafficking in them and using them as a weapon to obtain money for subsequent persons who may want to use bonafide trademarks in respect of some classes in respect of which they find those bogus trademarks registered.”
The ethos of the above statement has been perfectly encapsulated in the provisions of the Trademarks Act, 1999. The act clearly laids doe the provisions related to rectification of the register, and cancellation of a registered Trademark under section 47 and 57 of the Act.
Section 57 of the act deals with the rectification of the regier of trademark where the trademark is entered in the register without sufficient cause or wrongly remains on the register.
Whereas section 47 of the act deals with the cancellation of registration of trademark on the grounds of non-use and conditions which needs to be satisfied are specified under sub section 1(a) and 1(b) which are required to be satisfied by the aggrieved person (hereinafter referred to as the Petitioner) instituting the action.
Under section 47 (1)(a), the Petitioner shall prove the following things-
- That the Trademark was registered without any bonafide intention.
- There has been no bonafide use of the registered trademark for a period of three months preceding the date of the cancellation petition.
Under section 47 (1)(b), the Petitioner shall prove-
- That the period of five years and three months has elapsed since he trademark was entered into a register of trademark during which there has been no bonafide use of the registered Trademark.
The exceptions are there which are laid down by the statute to the conditions mentioned in section 47(1) are-
- Where the application for registration has been permitted under section 12 of the Act to registre an identical or similar trademark, or where the tribunal is of opinion that he might properly be permitted so to register such a trademark, the Tribunal may refuse an application for cancelation if it is shown that there has ben bonafide use in relation to either goods or services of the same description of goods or services associated with those goods or services of that description for which the trademark has been registered.
- Provisions of section 47 (1)(b) shall not apply to a mark if the proprietor is able to show the existence of special circumstances in trade which prevented him from using the trademark.
The difference between section 47 (1) (a) abd (b) is explained by the Hon’ble Supreme court in the case of American Home products Corporation Vs Mac Laboratories Pvt. Ltd. and Ors. when Supreme court while interpreting section 46 (1) (a) and (b) of the Trade and Merchandise Marks Act 1958 opined that “the distinction between clause (a) and (b) is that if the period specified in clause (b) has elapsed and during that period there has been no bonafide use of the trademark, the fact that the registered proprietor had a bonafide intention to us the trademark at the date of the application for registration becomes immaterial and the trademark is liable to be removed from the register unless his case falls under section 46(3), while under clause (a) where there had been a bonafide intention to use the trademark in respect of which registration was sought, merely because the trademark had not been used for a period shorter than five years from the date of its registration will not entitle any person to have that trademark taken off the register. Under both these clauses the burden of proving that the facts which brings into play clause (a) or clause (b) as the case may be, exists is on the person who seeks to have the trademark removed from the register. Thus, here there has been a non user of a trademark for a continuous period of five years and the application for taking off the trademark from the register has been filed one month after the expiry of such period, the person to have seeking the trademark removed from the register has only to prove such continuou non-user and has not to prove the lack of bonafide intention on the part of the registered proprietor to use the trademark at the date of application for registration. Where, however the non user is for a period of less than five years the person seeking to remove the trademark from the register has not only to prove non user for the requisite period but has also to prove that the petitioner for registration of the trademark had no bonafide intention to use the trademark when the application for registration was made.
Firstly it has been held that the two conditions set out in clause (a) is cumulative. This memes that in order to succeed in this clause the Petitioner must show lack of bonafide intention as well as bonafide use. Therefore this clause will not prevail where there was no bonafide intent to use but there has been bonafide use of the trademark and vice versa.
The word use has been defined under section 2 (2)(b) of the ACt as to the use of the mark shall be construed as a reference to the use of printed or other visual representation of the mark. The courts have settled that use may be other than physical and include actions other than actual sale and thus it will be taken into account while determining bonafide use of the trademark.
The intention of the legislature behind permitting cancellation of registration on the basis of non use is to keep the register clean and prevent trademark squatting. Therefore, brand owners should be careful while making applications for registration as lack of bona fide intent to use the mark or the lack of bonafide use may render the registration vulnerable to a cancellation action.