No use of trademark, no remedy

As an IP lawyer, let it be informed that when a trade mark is not in use, no remedy is available for protection of that trademark on the ground of non use of it. In fact if it is proved that registered trademark is not in use, and it creates chaos, then, on the ground of non-use, such trademark is removed from register in respect of good or services for which it is registered as per the provision of section 47of the Trademark Act,1999 (herein after referred as the Act).

That's why mere registration of the trade mark is not enough, the use of the trade mark in business or services plays vital role to get protection of it. In the case of SIZZLER INTERNATIONAL MARKS in the year 2001, Inc, three registered trade marks SIZZLER were rectified by Trade mark as SIZZLERS RESTAURANT NO. 1 LTD filed rectification applications on the ground of non-use of such trade mark for the five years in U.K. The Registrar relied upon Section 46 of the U.K. Trademarks Act 1994 observed that "it is not only a privilege for a person to be the proprietor of a registered trade mark, but it represents a monopoly: the Court should not be too ready to perpetuate a monopoly in favour of a person who has not done anything to promote or enjoy it for a period of five years", Hence , the marks are rectified on the ground of non-use.

The definition of the "Trade mark" under Section 2 (zb) of the Act clearly depicts that a trade mark should be used in relation to goods or services for the purpose of indicating a connection of trade between the goods or services and a person becomes a proprietor of the trade mark to use it. It means that the entire Axis of the trade mark to be a source identifier revolves round on the use of the trade mark in course of business or service, as the case may be. Section 2(b) of the Act informs that any reference to the use of a mark is to be construed to the use of printed or other visual representation of the mark and as per section 2 (c)(i), any reference of the use of a mark in relation to goods shall be construed as a reference to use of a mark upon or in any physical or in any other relation to such goods and as per section 2 (c) (ii) in respect of services, any part of any statement about availability, provision or performance of such service as a reference to the use of a mark for such services.

Thus the above mentioned sections clearly indicate that the mark must be in use during the course of trade or service, if it is not used and is idly registered, such registration does not give legal protection to the proprietor qua that idle registered trademark. Now the question is arisen in respect of prima facie evidence of validity of the registered trade mark as per section 31 of the Act, whether can a registration of a trademark prima facie be considered a valid in legal proceedings even though there is no use of it in trade or business or services ? The use of such registered trade mark must be proved or established at least prima facie for being protected in legal proceedings, otherwise, the doctrine of "non-use" of the trade mark would be frustrated. Article 19 of TRIPS emphasizes on the requirement of Use of a trademark.

If a registered Trademark is not in use for an uninterrupted period of at least three year, the registration of such trade mark is to be cancelled on the ground of non-use as per the provision of Article 19. In the case of Neon Laboratories vs. Medical technologies reported in 2015 (0) AIJEL-SC 57240, Hon'ble SC Court considered the use of the trade mark 'PROFOL' extensively and continuously by the plaintiff to consider the issue of prior user against the prior registration of the defendant's trade mark which became dormant for twelve years after its registration.

Thus Hon'ble Supreme Court considered that 'USE' of the impugned trade mark in that case to adjudicate the case and Appeal filed by the Appellate-Defendant was dismissed and confirmed the Order of injunction passed by the trial Court. Considering the legal scenario, it is opined that the when there is no use of trade mark in trade or service, such trade mark is not entitled to be protected and no remedy is available.

 

Chirag Bhatt 
on 11 August 2017
Published in Intellectual Property Rights
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