The Silent Scythe: How Inactivity Trims Trademark Rights in India

What becomes of a trademark that, though registered robustly for a wide array of goods and services across India, is only sparingly deployed in commerce and lies dormant or a mark that claims pan-India protection but lives its commercial life only in a corner of Delhi NCR? Does law merely tolerate this gap between entitlement and activity, or does it intervene?

Trademark law in India, like its counterparts globally, rests on the premise that rights must be earned and sustained through use. It is a doctrine that breathes vitality into the legal framework: a trademark is not a trophy, but a tool, functional, active, and purposeful. The law does not exist to shield speculative interests or allow monopolistic hoarding. It rewards genuine economic engagement.

A trademark stands as a formidable pillar of any business, embodying its identity, solidifying customer trust, and acting as a crucial legal bulwark. Yet, this protection is not an immutable shield. Trademark law, by its very nature, demands active engagement. The failure to genuinely deploy a registered mark in commerce can trigger a severe, often irreversible consequence: its cancellation. As profoundly articulated by the Supreme Court of India in American Home Products Corporation v. Mac Laboratories Pvt. Ltd.[1], the fundamental objective behind this legal imperative is to "prevent trafficking in trademarks", a clear stance against mere speculative registration and in favor of genuine commercial enterprises.

This foundational principle gives rise to the potent concept of partial revocation. This is a precise legal instrument designed to prune away dormant rights, ensuring that the Trademark Register accurately reflects the current and active commercial landscape of a mark. This article navigates the intricate pathways of partial revocation in India, exploring its critical dimensions: the surgical excision of rights over unused goods or services and the nuanced challenge of territorial non-use.

The legal system in India acknowledges that business realities can shift, and initial trademark registrations might be broader than actual usage. Partial removal is the mechanism to address this, ensuring that the scope of protection aligns with genuine commercial activity. It prevents a proprietor from indefinitely holding exclusive rights over goods/services or geographical areas where no actual brand building or use is occurring. The Trademark Law is meant to only protect those who are genuinely engaged in commerce, preventing monopolistic practices where a trademark is hoarded without any real commercial activity.

 

The Indian Legal Arsenal: Understanding the Basis for Partial Removal

India's comprehensive framework for addressing idle trademarks is enshrined primarily in Section 47[2] of the Trade Marks Act, 1999 ("the Act"). This pivotal legislation outlines the conditions under which a registered mark can be challenged and potentially removed due to inactivity.

 

Grounds for Cancellation Due to Non-Use may be either of the following:

1. Lack of Bona Fide Intention to use: Cancellation may be pursued if the trademark was registered without any bona fide intention on the applicant's part to genuinely use it in relation to the specified goods or services, and no such bona fide use occurred up to three months before the cancellation application was filed.

   
   

2. Continuous Non-Use: The trademark has remained a commercial phantom, with up to a date three months before the date of the cancellation application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use.

 

A vital distinction, meticulously carved out in the American Home Products Corporation case, lies in the proprietor's original bona fide intention. Under Section 47(1)(b), once the grim five-year-plus period of non-use has elapsed, that initial noble intent recedes into irrelevance. The legal spotlight then intensely focuses solely on the stark absence of actual use. This stands in sharp contrast to Section 47(1)(a), where the proprietor's original intent remains a paramount consideration. Ultimately, the assessment of whether intent or use is deemed "bona fide" is a dynamic, fact-specific inquiry, decided by the nuanced circumstances of each unique case.

 

How Partial Removal is Applied Under Indian Law:

Addressing the core questions of a mark's actual use versus its broad registration, Indian law provides specific avenues for partially limiting or removing trademark rights:

●      Rectifying Overly Broad Specifications[3]: If a trademark was initially registered with a wide specification covering many goods or services, but it is demonstrably proven that the trademark has been genuinely used only in relation to some of those goods or services, the Registrar of Trademarks has the authority to require the specification of goods or services for which the trademark was registered to be rewritten. This action ensures the registered scope is precisely aligned with the demonstrated commercial use, effectively removing protection for the unused categories.

●      In cases where a trademark has already been registered, and a subsequent applicant is granted registration of an identical or deceptively similar mark under the provisions of Section 12 of the Trade Marks Act, 1999 (which allows for registration based on honest concurrent use), the High Court, upon an application for rectification under Section 47, may order partial removal of the earlier registered trademark. This may occur if the earlier mark has not been used in relation to certain goods, services, or territories, and the continued registration unjustly interferes with the bona fide use by the subsequent registrant. In such instances, the High Court may limit the scope of the earlier mark to reflect its actual use, thereby avoiding overlap with the genuinely used and registered rights of the subsequent applicant.[4]

The implications of such partial cancellation for specific goods and services are profound and starkly irreversible: the affected goods and services are irrevocably stripped of protection. Crucially, once severed, protection cannot be restored later using ‘Extend protection of your registration’. This definitive action frees the market, allowing competitors to utilize or register similar marks for these now unprotected categories.

Analysis: Judicial Precedents

The judicial landscape in India is rich with examples where marks have been partially or wholly removed for non-use concerning specific goods or services.

●      Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd. (The Charminar Case)[5]: This landmark Supreme Court case is a cornerstone for understanding partial removal of trademarks. Vazir Sultan had registered the trademark "Charminar" for "manufactured tobacco" but their actual use was limited solely to cigarettes. The Supreme Court ruled their registration should be limited to "cigarettes" only, establishing that a trademark owner cannot hold an overly broad registration for goods or services for which they have no bona fide intention to use or have not actually used the mark, thereby preventing monopolistic hoarding.

●      Koteshwar Chemfood Industries Pvt. Ltd. v. Sachdeva and Sons Industries Pvt. Ltd.[6]: This Delhi High Court case provides another clear illustration of partial rectification due to non-use. The petitioner sought rectification/cancellation of the trademark "PRIME" for goods in Class 30. The respondent had registered the mark but failed to prove its use for "salt and spices", despite claiming it. Given the unrebutted submissions of non-use and the mark's expiry, the Court directed the rectification of the respondent's trademark registration to delete "salt and spices" from its scope.

●      A.K. Al Muhaidib and Sons v. Chaman Lal Sachdeva and Another[7]: This Delhi High Court judgment led to the complete removal of the trademark "AL-WALIMAH" due to continuous non-use. The petitioner, a Saudi Arabian company with extensive international use for rice, challenged the respondent's mark registered in 1990. Crucially, an investigation report and market surveys definitively showed no commercial activity by the respondent. The Court, finding no rebuttal, concluded the mark was liable for removal under Section 47(1)(b). This case powerfully illustrates the judicial willingness to enforce the "genuine use" requirement, and how complete removal can occur for an entire class if no use is proven.

●      Certiline SRL v. Indigo Prints Pvt Ltd. & Anr.[8]: This Delhi High Court order serves as a stark warning about the consequences of false declarations during trademark registration. The petitioner, Certiline SRL, successfully sought the cancellation of the trademark 'CERTICARD', registered by Indigo Prints Private Limited, on the primary ground that Indigo Prints had provided false user details. Despite claiming use since April 1, 2013, Indigo Prints admitted in court that they had not launched any physical product using the mark and failed to provide any supporting documentation for their purported use. The Court unequivocally found this to be a "false statement, which amounts to fraud", and ordered the immediate cancellation of the trademark. This case powerfully reinforces that genuine use, and honest representation thereof, is not just a matter of compliance but a foundational principle underpinning the validity of trademark rights.

Territorial Non-Use: India's Unified Market Perspective

Returning to the second foundational question: if a mark is used only in Delhi NCR, what of the rights granted for the entire country?

While theoretically appealing, territorial partial revocation has not found favour with Indian courts. Unlike some foreign jurisdictions, Indian trademark law does not mandate use in every region to sustain a national registration. Here’s why:

●      Pan-India Market Realities: Indian commerce is integrated. Even if a brand is physically confined to one city, online presence, digital marketing, and logistics often create de facto national reach.

●      Digital Influence and Brand Spillover: A campaign in Delhi today may reach consumers in Kerala tomorrow via social media or e-commerce platforms. Courts recognise this fluidity and do not impose archaic territorial barriers.

●      Legal Consistency and Commercial Certainty: Permitting regional revocation would create chaos in enforcement, requiring businesses to defend use zone-by-zone. It would also dilute the certainty offered by a unified trademark register.

As held in Kabushiki Kaisha Toshiba v. TOSIBA Appliances[9], genuine use in any part of India suffices to maintain nationwide rights, provided such use is not illusory or dishonest.

Conclusion: The Imperative of Active Trademark Stewardship

Trademark rights, though legally conferred, are not meant to be fossilised privileges. They are dynamic assets earned, reinforced, and sustained through continuous and genuine use. Indian trademark law, through the carefully crafted mechanism of partial revocation, ensures that the Register does not become a repository of idle marks or speculative claims. It reflects an evolving commercial landscape where legal protection is proportionate to commercial presence.

Partial revocation serves a dual purpose: it preserves the sanctity of the Trademark Register by purging deadwood, and it levels the playing field by ensuring that exclusivity is available only to those who actively participate in the marketplace. It acts as a quiet but effective check against brand hoarding and legal overreach.

Importantly, while Indian jurisprudence has embraced the trimming of unused goods and services from a registration, it has wisely resisted fragmenting trademark protection on territorial lines. Courts have recognised the modern reality of integrated markets, digital outreach, and nationwide brand presence, even if physically concentrated in specific geographies.

For trademark proprietors, the law issues a clear directive: registration is not the destination, it is the beginning. The true measure of a trademark's strength lies not in the breadth of its registration, but in the depth and continuity of its commercial engagement. Vigilant, authentic use is not merely recommended; it is the lifeblood of the right itself.

In the end, trademarks are not static symbols. They are living indicators of enterprise. And like all living things, their survival depends on meaningful, sustained activity. In the silence of non-use, the law listens and sometimes, it acts with scythe.

References:

[1]  AIR 1986 SC 137.

[2] §47, The Trade Marks Act, 1999, No. 47 of 1999, Acts of Parliament, 1999 (India).

[3] Government of India, Ministry of Commerce & Industries, Office of Controller General of Patents, Designs & Trade Marks, Draft Manual of Trade‑Marks Practice & Procedure (Mar. 10, 2015), available at https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr‑draft‑manual.pdf

[4] §46, The Trade Marks Act, 1999, No. 47 of 1999, Acts of Parliament, 1999 (India).

[5] (1997) 4 SCC 201.

[6] C.O. (COMM.IPD-TM) 375/2021.

[7] 2024 SCC OnLine Del 1026.

[8] C.O. (COMM.IPD-TM) 105/2022.

[9] CS(OS) 55/2006 & I.A. 784/2023.