On What Grounds can a Registered Trade Mark Be Removed in India?
Procedure for Removal of a Registered Trade Mark in India on grounds of non-use:
Section 47 of the Indian Trademark Act provides for the removal of a registered trade mark from the Register of Trade Marks either if it is proved that the trade mark was not registered with a bona fide interest and was not put into use three months prior to the date of application, or on the ground of continuous non-use of the mark for a period of 5 years and 3 months from the date of issuance of the registration certificate.
Clause (3) of the said provision, however, provides for special circumstances under which non-use of the registered mark may be excused. If non use of a trade mark is 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 for removal relates, then the application for removal shall not succeed.
In a Delhi High Court judgment, Pfizer Products Inc. v. Rajesh Chopra, the plaintiff filed a suit for infringement and passing off action against the defendant wherein, the propriety rights of a drug sold under the name of “Geodon” by the defendant were challenged. The plaintiff had registered the same in India on July 18, 1996. The defendant, on the other hand, claimed proprietorship of ‘Geodon’ and use of the mark since June 01, 2003. One of the major contentions of the defendants was that the plaintiff had failed to show use of the trademark in India since its registration and hence the mark is liable to be struck off from the register so that the defendant could legally market his product under the concerned trademark. The balance of convenience was in favour of the plaintiff as it is a global player, selling the drugs by this name in over 40 countries. Even though the sale of the concerned drugs in India could not be established, the importance of wrongfully uing the trademark of such a global product in the field of medicine was established. Hence, the trademark was not removed from the Register
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