Author – Jalaj Govil, Student from Galgotias University.

Introduction

The practice of trademark by unlawful means and using it in trading is known as the trademark piracy. When the breach of trademark takes place the proprietor of the registered trademark can take legal action and the last option for an unregistered trademark is passing off. A mark can lose its uniqueness by non-use. The non-use of trademark is with the registered trademark holder but not on relation of exterior factors beyond the control of such registered trademark holder. The non-use of trademark can be subjected to the cancelation of the registered trademark form the registry.  Granting of relief under the section-46 of Trademark act, 1999 is the form of discretionary relief and it has clearly provided a period within which an application can be filed. However, this provision of the act is silent with respect to the starting time of limitation. The Indian trademark law is far more relaxed in comparison and certainly takes a broader view of use of the trademark. For starts, rectification and cancelation procedures can only take effect when there is an objection to the non-use of trademark by the third party. The registration of the mark does not gets canceled, even though the mark is not have been in use for a long period of time. The registered trademark owners in India are not required to periodically prove ongoing use of their marks in order to maintain registration. India has considered certain countries as convention countries which provide the trademarks to the citizens of India similar as the privileges granted to its own citizens. So a person or a company from a convention country can make an application in the home country for the registration of trademark in India. If the application of this company or a person is accepted, then its trademark will be deemed to be registered in India form the very date on which he or she made the application in the home country.

Function of Trademark

The main function of the trademark is to distinguish the good and services of one company from those of other companies. The main function of the trademark is to recognize and distinguish the source of origin of any good or service while on the other hand, other functions are becoming least essential as the communication, advertising and investing functions. According to this specific principle the senior trademark is safeguarded against the identical trademarks for the same good because the market keeps on growing and trade and business keeps on expanding. Due to this there is a rapid increase in the number of trademarks which are registered all over the world.

Special rights of the Trademark

A mark will not always reveal the name of the source, but if the consumer understands that all of the goods or services sold under a particular trademark are originated from a single entity, then such a mark will function as a trademark. Trademark also symbolizes the goodwill, which a company has established for a product or service and provide every protection for the company’s investment in that goodwill. Trademark provides aid to the consumer as it represents consistent and good quality. Trademark are exclusive rights that are conferred on the owner. The affidavit of support, nullify such a situation and such the issue under the section-46(3) of trademark act, 1999 is being answered in the favor of the appellant does not and cannot arise.

Non-use of the trademark

A registered trademark can be canceled within five years of the date of completion of the registration procedure because the mark has not been put to legal use by the proprietor or by anybody who has the consent and there are no proper reasons for this non-use. Indian trademark does not require the filing of the affidavit for the uninterrupted use of trademark however the non-use of trademark for a period of five years is a ground for removal of the mark from the register of trademark. In the Indian trademark system if the owner of the mark registers it then it is a sufficient evidence for the validity of such registration.

Effect of non-use of trademark

The main effect of non-use of trademark in India as well as USA is the removal of trademark from the trademark registry. However, sometimes new goods and services are launched to the market by the use of trademarks which have not been re-registered or which have not been used for a very long period of time. In such cases, the proprietor keeps themselves quite about the new trademark which infringes their existing mark because of the fear of the new user attacking the trademark on the ground of non-use and in such a case this would result in complete removal of the trademark from the trademark registry.

Case Laws related to non-use of trademark

1. Ruston and Hornby Ltd. Vs. Zamindara Engineering Co., in this case it was held that, the trademark was registered in the name of the plaintiff validly which was renewed and the defendant had no right to use the particular mark of the plaintiff as it would amount to infringement of the plaintiff’s exclusive rights. Later on it was established as a fact that, the non-use of trademark by the plaintiff was not willingly but due to limitations imposed by the government for dairy business and in the circumstances, there was no abandonment.
2. Avis International Ltd. vs. Avi Footwear Industries and Anr. in this case it was held that plaintiff was a registered proprietor of trademark ‘AVIS’ which was in business of readymade garments since 1979. The suit was filed by the plaintiff for injunction for restraining the defendant by using the mark and defendant stated that plaintiff was non-user of trademark since 5 years.

Conclusion

In order to make our country a true global powerhouse there are need of provisions for the regulation of cybercrimes and not only under the IPR laws but also under information and technology laws. For this the time period of non-use of trademark which is of five years as a ground of removal should be reduced to the period of three years. India seems to be lenient in accepting excuses for non-use of the trademark. India even permits non-use of trademark as a special situation in trade. Therefore, it is not very clear that till what extent the court accepts the special situations in the trade because the cases related to trademark which come before the court are clear cut cases such import restrictions or government policies, etc. According to my viewpoint, there should be strict laws regarding these things and there should be special provisions that would deal with such kind of cases.

References-

1. Trademark Act, 1999
2. Section-46(3) of Trademark act, 1999 the tribunal may, in a case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relating to any opposition or appeal, and in default of such security being duly given, may treat the application as abandoned.
3. Ruston and Hornby Ltd. Vs. Zamindara Engineering Co., 1970 AIR 1649, 1970 SCR (2) 222, 1969 SCC (2) 725
4. Avis International Ltd. Vs. Avi Footwear Industries and Anr., 42 (1990) DLT 397
5. Zest IP Blog on Critical Overview of the Effect of Non-use of Trademark