Any person, aggrieved by an entry wrongly made or wrongly remaining on the register of trademark, is entitled to file a petition for cancellation of registration or rectification of the register for removal of the registered mark. The grounds on which the registered trademark can be removed from the register have been narrowed down and restricted under the new Trade Marks Act, 1999, specifically under Sections 47 and 57.
Cancellation/Rectification based on non-use:
The registered trade mark can be ordered to be removed from the register in view of section 47 of the Act if it is proved that the trade mark was registered without any bonafide intention on the part of the applicant for registration to use the trade mark in relation to the goods or services offered by him and, as a matter of fact, there has been no bonafide use of the trade mark up to a date three months before the date of application. Furthermore, if the registered trade mark is not used up to the date of three months before the date of application, a continuous period of five years from the date on which the trade mark was actually entered in the register or longer had elapsed during which there was no bonafide use thereof in relation to the goods and services, the period of five years is to be calculated from the date on which the mark was actually put on the register i.e. the date on which the registration was ordered to be made and not from the date of the application.
Other Grounds for rectification (Section 57):
That the register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation.
That the entry was made without sufficient cause i.e. registration was obtained by misrepresentation of, facts, similar to earlier mark registered etc.
That the mark was wrongly remaining on register i.e. it is contrary to some provisions of the act or likely to cause confusion.
That the mark has not been used for a continuous long period of more than five years.
That the renewal fee has not been paid.
The Opposition proceedings are to be initiated before the Registrar of Trade Marks (determined on the basis of the place of filing of the application for the opposed trade mark) and the same may be initiated on absolute grounds, relative grounds, grounds of being a well-known mark, bad faith, dishonest adoption etc.
Filing of Opposition (TM-5): The opposition proceedings are initiated by filing of Notice of Opposition by the Opponent at the concerned Registry and such notice of opposition must be filed within 4 months of publication of the mark in Trade Marks Journal.
Service of Opposition (TM-5): Upon receipt of the Notice of Opposition, the Registrar is required under the Act to serve a copy of the same to the Applicant. This could take about 3 – 12 months in practice.
Filing of Counter Statement (TM-6): Once the notice of opposition is served on the applicant by IPO, the Applicant is required to file a Counter Statement within two months (not extendable) from the receipt of such Notice of Opposition. If the Counter Statement is not filed within the said stipulated period, the applicant is deemed to have abandoned the subject application and the opposition succeeds.
Service of Counter Statement (TM-6): If the Applicant files the Counter Statement, the Registrar is required to serve a copy of the Counter Statement on the opponent.
Filing of evidence in support of Opposition (Rule 50 evidence): Upon receipt of the counter statement from the IPO, the Opponent in turn has two months (extendable by one month) to file Evidence in Support of Opposition by way of Affidavit and annexures or write to the Registrar that he does not desire to file evidence but intends to rely on the facts stated in the Notice of Opposition. The Opponent also has to serve a copy of said evidence on the Applicant.
Filing of evidence in support of Application (Rule 51 evidence): On receipt on the Opponent's evidence, the Applicant has two months' time (extendable by one month) for filing Evidence in Support of Application, if any or to write to the Registrar that he does not desire to file evidence but intends to rely on the facts stated in the Counter Statement. The Applicant also has to serve a copy of said evidence on the Opponent.
Filing of Rebuttal evidence (Rule 52 evidence): On receipt on the Applicant's evidence, the Opponent has one months' time (extendable by one month) for filing Rebuttal Evidence. The Opponent also has to serve a copy of said evidence on the Applicant.
Hearing: Upon completion of evidence, the Registrar appoints a hearing in the matter. The hearing is usually supplemented by filing of written submissions with caselaw.
Decision: It usually takes about 3-5 years for a decision in a fully contested Opposition proceeding but may take longer depending on complexity of the proceedings.