SUBJECT: Intellectual property law

Project topic:
Critical overview of the effect of non-use of
trademarks

Submitted By
Akhil pratap singh
Roll no. 1305
4 Year , 7 Semester, B.A.LL.B(Hons.)
TH th

Submitted to
Dr. s.c. roy
Faculty of intellectual property Law

Chanakya national Law University, Patna

september, 2018
 Acknowledgement

I have taken efforts in this project. However, it would not have been possible without the kind
support and help of many individuals and therefore I would like to extend my sincere thanks
to all of them.

First of all I would like to express my special thanks of gratitude to my teacher Dr. S.C Roy
who gave me the golden opportunity to do this wonderful project on the topic, effect Critical
Overview of non-use of Trademarks which also helped me in doing a lot of Research and I
came to know about so many new things I am really thankful to them.

I acknowledge my friends who gave their valuable and meticulous advice which was very
useful and could not be ignored in writing the project. I want to convey most sincere thanks
to my 5th year senior Mr. Hrishikesh Mishra for helping me throughout the project.

I would also like to express my gratitude towards my parents for their kind co-operation and
encouragement which always help me in becoming productive.

Thank You All!

Hrishikesh Mishra

R.No. 1131, Sem VII

B.A. LL.B. (H)

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 Contents

Acknowledgement ..................................................................................................................... 2

Research Methodology .............................................................................................................. 4

Chapter 1. Introduction .............................................................................................................. 6

What is Trademark? ............................................................................................................... 6

Rectification of Registers in case of Non-Use ....................................................................... 7

Chapter 2. Conditions for Non-Use Cancellation ...................................................................... 9

What is Non-Use Cancellation? ............................................................................................. 9

What is use? ......................................................................................................................... 10

What is Non-Use? ................................................................................................................ 11

Exceptions:........................................................................................................................... 11

Chapter 3. Effect of Non-Use of Trademark............................................................................ 13

Rectification Proceeding ...................................................................................................... 13

Owner’s Response: .............................................................................................................. 14

Remedy to the Owner: ......................................................................................................... 14

Is any Criticism Possible? .................................................................................................... 15

Chapter 4. Case Laws............................................................................................................... 16

Chapter 5. Conclusion.............................................................................................................. 23

Bibliography............................................................................................................................. 24

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 Research Methodology
Aims and Objectives:
The researcher intends to research on:

• The conditions on which the trademark granted can be cancelled or removed or

rectified from the register

• The effect of non-use of trademarks for certain period of time

Hypothesis:
The researcher is of the view that since the trademark is an exclusive right therefore it should
benefit the owner but not at the cost of social interest. If a trademark is not used for a
sufficient period of time then interest of other individuals must be considered. Trademark
should not be used merely for reserving an exclusive right instead it should be used for
fulfilling its purpose and if it is not happening then cancellation must follow.

Methodology Adopted
The researcher has preferred doctrinal method of research. The topic “Critical overview of
the effect of non-use of trademarks” will require me to access CNLU library and various
authenticated websites on internet.

Sources of Data
Primary Sources: Laws, Acts.

Secondary Sources: Books, Newspapers, Articles, Journals

Mode of Citation
The researcher has followed a uniform mode of citation throughout the course of this project.

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Chapterisation:
Chapter 1.Introduction?

Chapter 2. Conditions for Non-Use Cancellation

• What is Use
• What is Non-Use
• Exceptions

Chapter 3. Effect of Non-Use of Trademark

Chapter 4. Caselaws

Chapter 5. Conclusion

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 Chapter 1. Introduction

What is Trademark?

A trade mark provides protection to the owner of the mark by ensuring the exclusive right to
use it, or to authorize another to use the same in return for payment. The period of protection
varies, but a trademark can be renewed indefinitely beyond the time limit on payment of
additional fees. In a larger sense, trademarks promote initiative and enterprise worldwide by
rewarding the owners of trademarks with recognition and financial profit. Trade mark
protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar
distinctive signs to market inferior or different products or services. The system enables
people with skill and enterprise to produce and market goods and services in the fairest
possible conditions, thereby facilitating international trade. 1

With the advent of WTO, the law of trademarks is now modernized under the Trade Marks
Act of 1999 and is in harmony with two major international treaties on the subject, namely,
The Paris Convention for Protection of Industrial Property and TRIPS Agreement. 2

A trademark or trade-mark3 is a recognizable sign, design or expression which identifies

products or services of a particular source from those of others. The trademark owner can be
an individual, business organization, or any legal entity. A trademark may be located on a
package, a label, a voucher or on the product itself. For the sake of corporate identity
trademarks are also being displayed on company buildings.4

The essential function of a trademark is to exclusively identify the commercial source or

origin of products or services, so a trademark, properly called, indicates source or serves as a
badge of origin. In other words, trademarks serve to identify a particular business as the

1 Trademark Non-Use Cancellation, available at http://www.trademarksindia.net/trademark-non-use-

cancellation.php, last seen on 01/11/2017
2 Majumdar and Co., Limits On Effect Of Registered Trade Mark, Report A229, National Seminar on Trademark
3 The styling of trademark as a single word is predominantly used in the United States and Philippines only,

while the two-word styling trade mark is used in many other countries around the world, including the European
Union and Commonwealth and ex-Commonwealth jurisdictions
4 Trademark, available at http://www.cbp.gov/xp/CustomsToday/2002/February/other/christmas.xml, last seen

on 01/11/2017

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source of goods or services. The use of a trademark in this way is known as trademark use.
Certain exclusive rights attach to a registered mark.5

A trade mark (popularly known as brand name in layman’s language) is a visual symbol
which may be a word to indicate the source of the goods, a signature, name, device, label,
numerals, or combination of colours used, or services, or other articles of commerce to
distinguish it from other similar goods or services originating from another. It is a distinctive
sign which identifies certain goods or services as those produced or provided by a specific
person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their
signatures, or "marks" on their artistic or utilitarian products. Over the years these marks
evolved into today's system of trade mark registration and protection. The system helps
consumers identify and purchase a product or service because its nature and quality, indicated
by its unique trade mark, meets their needs.

Rectification of Registers in case of Non-Use :

It should be noted that trademark rights generally arise out of the use of, or to maintain
exclusive rights over, that sign in relation to certain products or services, assuming there are
no other trademark objections. In India, Section 476 of the Trademarks Act lays down two
scenarios regarding removal of a registered trademark, they are;

1. if it is proved that the trademark was registered without any bona fide 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.

2. 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

5 World Intellectual Property Organisation (1997). Introduction to Intellectual Property: Theory and Practice.
Kluwer Law International. p. 23.
6 S. 47, The Trade Marks Act, 1999

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 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.

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. 7

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.8 These aspects would be discussed at length in coming chapters.

7 Rectification of Trademarks, available at https://selvams.com/rectification-of-trademark-in-india-on-grounds-

of-non-use/, last seen on 01/11/2017
8 Ibid.

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 Chapter 2. Conditions for Non-Use Cancellation

What is Non-Use Cancellation?

The removal of any registered trademark from the Register of Trade Marks, based on the
non-use of the trademark during 5 years after its registration and 3 months prior to the date of
filing the registration application, in relation to the goods or products specified in the
registration application, is termed as the trademark non-use cancellation in India, and also
in countries abroad. Such a case may also be called as the removal of a trademark from the
register based on non-usage.9

The Section 47 of the Indian Trade Marks Act of 1999 deals exclusively with the cancellation
or removal of any registered trademark from the Register of Trade Marks solely based on the
ground of non-usage of the trademark in connection with the specified goods or products, for
the given time limit. Summarily, any registered trademark is vulnerable to such cancellation
or removal, if it is subject to any of the following two conditions or situations 10 :

• If a trademark has not been used in commerce of all those classes of goods or
products which have been specified in the registration application, after or prior to its
registration.

• If the registered trademark has not been in commercial use in relation to any of the
classes of goods or products specified in the registration application, during five years
after its registration or during three months prior to the date of filing the application.

9 Trademark Non-Use Cancellation, available at http://www.trademarksindia.net/trademark-non-use-

cancellation.php, last seen on 01/11/2017
10 S.47, Indian Trade Marks Act of 1999

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What is use?
The determination of whether a mark has been continuously used is a matter of fact which
varies from case to case. In relation to non-use of trademarks, “use” has been defined to
mean: “the use of the printed or any visual representation of the mark upon, or in any
physical or in any other relation whatsoever, to goods or services“. Moreover, with regard to
the term “use” the Courts have stated that, the term ”use” does not necessarily mean and
imply actual physical sale and it is now well settled that even mere advertisement without
having even the existence of the goods can be said to be an use of the mark. 11

The registered trade mark must be used in relation to those goods or services for which it was
registered. Thus, such use must be for all the goods or services covered in specification of
goods of which the mark is registered. The effect of use which is limited to a part of
registered goods or services may amount to genuine use if they are of the same trade
description. So for instance, the mark has been registered but hasn’t been manufactured yet,
nevertheless the trademark owner has started to promote the mark by way of advertisements
or TV commercials, which according to the courts, is usage of the mark though the mark
hasn’t been used as such.

But it should not be misconstrued that, use needs not to be genuine commercial use or should
just be token use. And the use needs to be in the country in which the mark is registered, i.e.
in India for our purposes. The amount and frequency of use will depend upon the nature of
the goods or services; for example the sale of two or three cases of tinned food over a five
year period would probably not be considered sufficient, whereas the sale of two or three
ships would.12 It is not sufficient to assert that the mark has been used, or just produce a
catalogue or a price list showing the mark in question. There needs to be a clear chain of
documentation showing use of the mark in relation to the goods / services for which the mark
is registered.

Using a trademark is established by putting the mark to use in a marketplace to identify goods
or services. You don't actually have to sell any trademarked goods or services, it's sufficient
to legitimately offer products under your mark to the public. For example, Sara creates a
website for her catering business, UnbelievableCatering.com, and offers goods and services

11 Tehemtan N. DARUWALLA, The requirement of genuine use of trademarks for maintaining protection,
Report Q218, pages 4-9
12 What is Use?, Trademark Law, available at http://mewburn.com/resource/trade-marks-use-it-or-lose-it/, last

seen on 01/11/2017

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on her website under the trademark "Unbelievable Catering". Regardless of whether Sara
ever makes a sell or has a single customer, her legitimate offering of catering services on her
website available to public is sufficient to establish "use" of her trademark, thus she will be
able to protect her trademark against infringement.

What is Non-Use?
A trademark that has not been used for five years and three months or more from the date of
registration can be cancelled for non-use. That is to say that, if the owner of the mark hasn’t
used the mark for more than 5 years and 3 months, then he may lose his trademark rights in
such rectification proceedings or opposition proceedings. While generally the onus to prove
non-use is on the person who files the application for rectification, however the onus might
be shifted to the trademark owner in the course of hearing and if he fails to establish usage,
his mark will be liable to be removed from the register. 13

This was what was held by the IPAB is a recent case where the respondent (trademark owner)
was to provide for evidence of usage. The owner submitted a document listing registrations in
various countries as usage which was rejected by the IPAB and the mark was ordered to be
removed as the evidence of usage was not sufficient.

Exceptions:
The non-use of a trade mark which is shown to have been done in certain circumstances
which includes restrictions on the use of the trade mark in India imposed by any law or
regulation and not to any intention to abandon or not to use the trade mark in relation to the
goods or services to which the application relates will be excused and would constitute a
proper reason for non-use. If what is stated above is proved by the registered proprietor then,
there is no maximum time limit prescribed for non-use. This has been given under clause 3 of
Section 4714 . An applicant shall not be entitled to rely for the purpose of clause (b) of sub-
section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is

13 What is Non-Use?, Trademark Law, available at http://mewburn.com/resource/trade-marks-use-it-or-lose-it/,

last seen on 01/11/2017
14 S. 47(3), Indian Trademark Act, 1999

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shown to have been due to special circumstances in the trade, which includes restrictions on
the use of the trade mark in India imposed by any law or regulation and not to any intention
to abandon or not to use the trade mark in relation to the goods or services to which the
application relates.15

Therefore in some circumstances, there may be a justifiable reason why the mark cannot be
used. For example, if the mark is to be used in relation to a pharmaceutical product and
approval for the pharmaceutical has been sought in good time from the appropriate regulatory
authority but has not yet been granted, this may be accepted as a valid reason for non-use.
However if product bearing the mark simply did not sell, this would not be a valid reason.

15 Exceptionto Non-Use, available at http://www.trademarksindia.net/trademark-non-use-cancellation.php, last

seen on 01/11/2017

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 Chapter 3. Effect of Non-Use of Trademark

If the registered trade mark has not been put to genuine use, then it is liable to be removed on
the grounds of non-use. Section 47 of the Trademarks Act of 1999 puts forth two interesting
scenarios regarding removal of a registered trademark from the trademark 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 up to three months
before the filing of application for removal. 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 16 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. 17

Rectification Proceeding :

It is a “person aggrieved” who can file an application for revocation of removal of the
registered trade mark on the grounds of non-use . The defendant in opposition proceedings is
entitled to demand proof of genuine use of the earlier trade mark provided that the earlier
registration has been put on the Register for more than five years. 18

The application for rectification in the register of trademarks, or for removal of any registered
trademark from the register, is to be filed with the concerned zonal Registrar of Trade Marks
or with the Intellectual Property Appellate Board (IPAB). For such purposes, the following
are the application Forms used:19

• Form TM-26 [to be used by an applicant other than the owner of the impugned
trademark]. In case of the Collective Marks or Certification Marks, the application
form used will be TM-43.
• Form TM-16 [to be used by the owner of any registered trademark].

16 S. 46, Indian Trademarks Act of 1999

17 Supra at 11.
18 Rectification Proceedings, available at https://selvams.com/rectification-of-trademark-in-india-on-grounds-of-

non-use/, lat seen on 02/11/2017

19 Ibid.

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In other words, any aggrieved person or company suffering from unfair and adverse effects
caused by the presence of the impugned trademark in the register, may file the application for
cancellation/rectification in the register or for removal from the register, based on any of the
above-noted specific cases. However, the applicant who filed any such application would
have to submit solid and convincing evidences in support of his claims and application filed.
Here, it must also be noted that, any such applications may also be filed by the owner of the
registered trademark to keep himself safe from such disputes in future. Additionally,
maintaining evidences of usage of the registered trademark in all the classes of goods and
products concerned, is also very securing to the owner of any registered trademark.

Owner’s Response:
After a non-use application has been filed, the registrar will send a notice to the registered
owner of the trade mark. As the owner of a trade mark, you should make sure your contact
details in the register are up to date. A trade mark owner has 2 months from the date of
advertisement to oppose removal by filing a notice of opposition. 20

Opposing Removal: Owner of the trademark can oppose removal. Filing an opposition
temporarily stops the trade mark being removed. The person who filed the notice (the
opponent) must rebut the allegation of non-use by providing evidence in support of the
opposition. If there is no opposition filed, the trade mark must be removed from the register.

Remedy to the Owner:

There is no remedy available for the owner once opposition proceedings have been initiated
and according to facts and circumstances, it has been proved that he has not used the
trademark for the required time period, but if no application for rectification is made for
removal of the trade mark by a person aggrieved and after the prescribed period of five years
the registered proprietor starts making genuine use of the trade mark then thereafter if an
application for revocation or removal of the trade mark is made that action will fail. There is
nothing to prevent a proprietor from registering a trade mark that has not been genuinely used
in the prescribed period of time. 21

20Supra at 17.
21 Majumdar and Co., Limits On Effect Of Registered Trade Mark , Report A229, National Seminar on
Trademark

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Is any Criticism Possible?

Should there be an exception from the genuine use requirement in some cases?

It is not advisable to create exceptions to the general principle that genuine use is required to
maintain protection of a registered trade mark.

What circumstances should justify non-use? Should different criteria apply?

The existing criteria where legal insufficiency is the sole excuse is not incorrect but
insufficient. Some more criterion must be included. War, natural disasters, total unrest in a
country, Governmental perverse regulations market approvals and the like should justify non-
use of the trade mark. All pressures and external forces over which the trade mark owner
could have no control should justify non-use of the trade mark.

What would be a suitable grace period for genuine use? The current grace period of 5
years is in order. Three year period of some countries is a wee bit too short. In various
industries pertaining to food, drugs, liquor and the like, it does take time to set up the
business, get approvals of the authorities before launching the end product on the market.

Should there be a threshold to the “genuine use” for trademark?

There should not be a threshold to the “genuine use” such as a de minimis rule for a trade
mark. By insisting on a threshold, would lead to speculative confusion. It would obviously
differ from product to product or service to service. The test of “genuiness” of use should be
“qualitative” and not “quantitative”.

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 Chapter 4. Case Laws

In recent pronouncements, Delhi High Court has come down heavily against companies
which, though registered proprietor of trademark, have never used the trade marks on their
own choice. Briefly stated, the law of the trade mark is that registered or not, any person can
claim priority in a coined/invented trade mark and prevent others from using the same or
deceptively similar mark lest people might confuse the source of the goods. The cardinal
principle of IP law as, as taught by a former senior and a very seasoned lawyer: There can be
only one mark and one source.

Non-use of a trade mark, if it is on the Register, gives anyone a statutory right to file a
cancellation petition before the Registrar of trade Mark under Section 47 22 to have the mark
removed. The period to initiate the petition must be five years and one month prior to initiate
the petition.

Now the Courts way up to Supreme Court realizes that the use of a mark can be in various
ways and there is no limitation for a person to use a mark. However, the Courts should see
the evidence of use, even in any form.

Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. 23

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. Court held that, 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.

22 S.47, Indian Trademarks Act, 1999

23 AIR 2003 SC 3377

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Bombay High Court case Eagle Potteries Pvt. Ltd., v. Eagle Flask Industries Pvt. Ltd. 24 ,

Petitioners had sought rectification of a trade mark and in the alternative prayed that the mark
be rectified by deleting from the specification of goods “Glassware, Porcelainware and
Earthenware so that the registration is restricted only to “Thermally Insulated Containers for
food, water and beverages in class 21”) The grounds taken by the applicants for rectification
was that the registered proprietors had not shown any user of their mark in respect of
Glassware, Porcelainware, Crockery and Earthenware”. Registered proprietors contented that
they had always used their trade mark on goods of the same description and they had always
manufactured vacuum flasks and refills of vacuum flasks made of glass and sold them
separately and hence in fact, they have manufactured “glasswares”. The Court refused the
application for rectification and held as follows : “The Respondents have been manufacturing
variety of goods, viz., thermos flasks, thermowares which would include jugs, casaorolles,
cups, mugs, trays, water containers, ice boxes and lunch boxes. All these are used for storing
and serving food, beverages and water. They are all goods which can be and are often
manufactured by the same person. They are all goods which would be sold through the same
trade channels. These are goods which can only be used in conjunction with crockery,
cutlery, earthenware and pots and pans. There can be no doubt that a common man seeing
these goods with the brand Eagle on crockery or porcelain ware or earthen ware is likely to
be deceived into believing that they all emanate from the same Company. Considering that
the source, the trade channel and use are all same, in my view, these are goods of the same
description. So far as glass ware is concerned, Respondent No. 1 have shown that they have
in fact been manufacturing glass refills for thermos flasks and selling these refills separately.
They have therefore, shown continuous manufacture and use of glassware. In my view, under
these circumstances, the discretion which the Court obviously has under 17 Sections 46 and
56 must necessarily be exercised in favour of the 1st Respondent.

24 AIR 1993 BOM 185

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Pfizer Products Inc. vs Rajesh Chopra25

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.

Virumal Praveen Kumar vs. Needle Industries 26

High Court held the following in paragraph 24:

In view of the factual position what has to be considered is whether the factum of
the registration of the trademark in the name of appellant is sufficient to grant
relief in favour of the respondents or whether something more is required. This
has to be considered in view of the submission of learned counsel for the
appellant that the trademark cannot exist in vacuum and in view of their being a
non-user of trademark since 1981, the respondents are not entitled to any
protection.

Quoting from the Cluett Peabody & Co. Inc. vs Arrow Apparals,27 passed by His Honour
S. Kapadia in Bombay High Court, their Honours held further in paragraph 26:

Though delay be itself would not be a defense but if there was a non-user for a
long period of time the mark would lose its distinctiveness or the mark is then
permitted to die for non-user. The Bombay High Court observed “It is well

25 2007 (35) PTC 59 Del

26 93 (2001) DLT 600
27 MIPR 2008 (1) 346

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 settled that lapse of time may bring about a change in the state of things in such a
manner that to grant injunction in favour of the plaintiff’s would be harsh and it
may cause irreparable damage or harm to the rights of the defendants.” Thus the
Bombay High Court was of the view that non-use of trademark does have a
bearing in action for infringement especially at the interlocutory stage and
equities would have to be balanced in such a situation. The Bombay High Court
had further laid down certain principles in this behalf which have been
reproduced in the impugned judgment. In point (f) of the order dated 28th March,
2000 it is stated that the object of the Act is to protect the right and not be a
source of monopoly. In point (j) it has been observed that a mark can lose its
distinctiveness by non-user. Thus the enforcement of the right of exclusive use of
a trade mark will depend on continuous use of the mark by the proprietor. In
point (k) it has been observed that the court shall not protect the right of
proprietor unless there is sale of the articles to which trade mark is attached or
related.

Fedders Lloyd Corporation Ltd. & Anr. Vs. Fedders Corporation28

Court held: Though the object of the Trade Marks Act is to protect the proprietary rights of a
registered trademark holder, at the same time the object is not to facilitate any monopoly of
such registered trade mark holder, despite non-use of the trademark by him as contemplated
by the Act. A trademark has no meaning, even if it is registered, unless it is used in relation to
goods and/or services. A Trademark which drops out of the use, dies when there are no goods
offered for sale as there is no use of the trademark. The mark can lose its distinctiveness by
non-use, where non-use is on the part of registered trade mark holder but not on account of
external factors beyond the control of such registered trade mark holder.

28 119 (2005) DLT 410

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Sun Pharma vs Cipla29

Defendant took up a defense that the Plaintiff has not used the registered mark for
considerable length of time and was, therefore, disentitled for any relief, much less interim.
His Honor examined at length and held the following in paragraph 19:

The law laid down thus appears to be that trade mark cannot be got registered and
held by persons as investors only and with no intention whatsoever to use the same
in connection with any goods and services. Even though I feel that in present times
of encouraging creativity and rights in abstract properties viz in domain names,
there should be no bar to professionals / intellectuals creating rights in marks and
being permitted to profiteer from them and there is a need for re-think on this
position, I find that even within the frame work of the existing law, in the present
case, there is sufficient trade connection between the registered trade mark and the
business/activities of the plaintiff and the plaintiff cannot be termed as a mere
trafficker in the trade mark. The Apex Court itself noted the complexities and delays
in modern times in starting a business and without the mark being taken off the
Register, I find that action for infringement of registered trade mark cannot be
defeated for disuse. We have in recent times also seen new scientific research
finding well-known brands in the field of pharmaceuticals to be harmful and the said
research findings being reversed after a decade or more. It would be travesty to
allow to be extinguished rights in such well- known brands in the interregnum. Such
rights have come to be known as intellectual properties and there is no reason why
facets of tangible property which can be bought and retained by persons who have
no use therefore and merely as investors, ought not to apply to intellectual property
as well. In present day times of surrogacy, when the child may not belong to the
mother from whose womb born and of sale for premium of automobile number
plates, there is no reason why insistence on owners using or intending to use the
mark or why restrictions in the name of trafficking, ought to continue vis--vis
trademarks.

However, in this case, His Honour also found evidence that the Plaintiff was not sitting on the
mark and was in fact, acting on it.

29 2005 (30) PTC 14 Bom

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Smithkline Beecham Plc. & Anr vs Sunil Sarmalkar30

His Honour Valmiki J. Mehta dismissed the suit of the Plaintiff, where the Defendants were
no longer appearing on the ground of non-use alone. In paragraph 7, His Honour held:

“So far as the fact that the trade mark PANAMAX is registered in favour of the
plaintiffs is concerned, the same cannot be disputed; however mere registration of a
trade mark cannot confer a right unless goods have been sold under the said trade
mark. The entire issue of distinctiveness qua the trade mark is necessarily with
reference to sales made under a trade mark. If there are no sales there cannot be
distinctiveness…”

Allergan Inc vs Intas Pharmaceuticals 31

His Honour Valmiki J. Mehta was dealing with the infringement case set up for trademarks
BOTOX and BTX-A, both registered marks. The Defendant stated that it has no conflict
whatsoever with Botox and the Plaintiff conceded that the trade mark BTX-A, despite
registered since the year 2002, was never used till 2012 in India. The Plaintiff stressed that
even without the use of the mark; the registration should confer rights to prevent someone
else using an identical/deceptively similar mark.

Relying upon Needle Industries and Fedders 32 , His Honour held in paragraph 6:

A reference to the aforesaid Para shows that though registration of the trademark is
intended to confer ownership rights qua the trademark which is registered, however,
the object is not to facilitate any monopoly of such registered trademark holder
despite non-use of the trademark. The Division Bench has also observed that a
trademark has no meaning, even if it is registered, unless, it is used in relation to
goods and services. The Division Bench has categorically observed that the
trademark which drops out of the use dies when there are no goods under the
trademark available for sale.

30 2000 (52) DRJ 55

31 AIR 2007 Delhi 108
32 119 (2005) DLT 410

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Though the counsel for the Plaintiff relied upon the judgments of the Supreme Court for
protecting persons claiming trans-border reputation and use in special circumstances, His
Honour categorically held that since the pleadings made no mention about any trans-border
reputation or any circumstances preventing the company to launch the product, the reliance
was misplaced. The law pertaining to non-use is a given. If you are not using the mark for a
considerable length of time, merely flashing a registration certificate shall not help, more so
when you are seeking interim protection against a person.

Milmet Oftho Industries & Ors v. Allergan Inc.33

In this landmark case, the Supreme Court extended the protection guaranteed under
trademark law in India to a well-known foreign brand. The court restrained an Indian
company from using the mark OCUFLOX. The court judgment was given irrespective of the
fact that the U.S. company has neither used the mark in the Indian market, nor the mark was
registered in India. The court held that the respondent in this case was the first to enter the
market and adopt the mark. Also, the fact that the respondent has not used the mark in India
is insignificant, if they were the first to enter the world market.

It was also laid down that in the fields of health care and medicine, all possibilities of
deception and confusion should be prevented; keeping in mind that public interest is not
jeopardized.

33 Civil Appeal No. 5791 of 1998

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 Chapter 5. Conclusion

Trademarks are a diverse and familiar feature in both industrial and commercial markets and
have long been used by manufacturers and traders to identify their goods and distinguish
them from goods made and sold by others. Marks are a very valuable form of intellectual
property because they become associated with quality and consumer expectations in a
product or service. Some goods have become almost synonymous with their trade names. 34
Coupled with intensive advertising campaigns, the utility of marks to their owners as
marketing weapons is plain to see and thus it comes as no surprise that trade mark rights are
vigorously asserted and defended.

There are certain limits on effect of registered Trade Marks as envisaged by the provisions of
Chapter IV of the Act. The relevant limitation for this project is that, 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.

It is important to remember that the purpose of a registering a trade mark is to protect your
brand of goods and services. If you cease using the brand name in respect of those goods and
services for an extended period, the need for the protection afforded by registration is deemed
to diminish. And that’s why, cancellation becomes probable at the instance of any aggrieved
third party. Thus, there are certain limits to registration, and in order to safeguard the product
from falling within the ambit of those limits, an efficient and proactive trade mark
management is an absolute must.

Lastly, it can be concluded that the statutory law in India, and the case law developed by the
Courts in India are well considered and well developed, without much criticism.

34 Soft drink Coca Cola, Cadbury chocolate, Levis Jeans, Nescafe Coffee etc.

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 Bibliography

BOOKS REFERRED:

• Kailasam and Vedaraman Law of Trademarks and Geographical- indications

• Act-Intellectual Property Rights (Pocket Size Edn.)
• Intellectual Property Rights in India by VK Ahuja
• Venkateswaran on Law of Trademark and Passing off by Kapil Wadhwa, Dr.
Abhishek Manu Singhvi
• Law Relating to Intellectual Property Rights by Dr. M.K Bhandari

JOURNALS REFERRED

• India Law Journal

• Indian Society of International Law
• Journal of Law and Economics

WEBSITES VISITED

• https://indiankanoon.org
• www.wikipedia.org
• www.cll.com
• www.tm-india.com
• http://www.trademarksindia.net

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