Abandonment Definition, Meaning of Abandonment, and Consequences of Abandonment

Meaning

In trademark law, the loss of legal rights over a mark as a result of failing to follow specific procedural requirements is referred to as "abandonment." Either a registered trademark or a trademark application may be abandoned.

Abandonment of Trademark Application

Trademark abandonment in India is governed through two major set of regulations: The Trade Marks Act, 1999, and the Trade Marks Rules, 2017.

· S.132, The Trade Marks Act, 1999: If the Registrar comes to the conclusion that the applicant has failed to seek trademark registration properly under the existing law or under the earlier trademark law, a notification may be sent to the applicant to remove the default within a specified time. The applicant may also be given an opportunity to be heard, if requested. In case the applicant fails to remove the default within the specified time, the trademark may be considered to be abandoned.

· Rule 33(4), The Trade Marks Rules, 2017: If within one month from the date of receipt of the examination report, the applicant fails to respond, the Registrar may treat the application as abandoned.

· Rule 44, The Trade Marks Rules, 2017: If the applicant fails to file a counter-statement within two months from the date of receipt of the notice of opposition sent by the Registrar, the opposition application shall be treated as abandoned.

Abandonment of Registered Trademark

S. 47 of the Trade Marks Act, 1999, deals with the abandonment of registered trademarks in detail. For non-use abandonment u/s 47, someone must apply to remove the mark, and the owner must prove they’ve used it or explain why they haven’t. If the registered trademark is not used properly, it loses its validity, and the proprietor loses its right to enforcement.

A registered trademark may be taken off the register in respect of the goods on the ground-

· Non-use of Trademark: A continuous period of five years or more has elapsed from the date the trademark was actually entered in the register, up to three months before the application date, without the trademark being used in relation to the goods or services for which it was registered.

· Lack of bona fide use: During the entire period, the trademark has not been used by the registered proprietor or any authorized user in relation to the goods or services concerned in a bona fide manner.

Practical Consequences of Trademark Abandonment

1. Loss of legal protection: In the case of abandonment of a trademark application or a registered mark, the protection offered under the Trade Marks Act 1999 ceases. An abandoned application does not give any legal rights, and an abandoned registered trademark loses the rights it earlier had.

2. Loss of priority and advantage: Abandonment means forgoing the right to the initial filing/registration date. This means that a prosecution for a similar trademark may be made by a different individual/organization prior to the first proprietor of the trademark.

3. Inability to enforce trademark rights: An abandoned trademark application or a struck-off registered trademark cannot be enforced against any party committing infringements. The trademark owner will be deprived of his rights to bring action against any party for trademark infringement.

4. Availability of the mark to the public: An abandoned trademark is available for adoption, use, and registration. This will result in creating confusion because the owner will not have access to the mark.

5. Financial and goodwill loss: Abandonment results in lost registration fees, legal fees, and branding. Where there is registration of the trademark, it may additionally cause lost goodwill and reputation associated with the mark.

Example: Trademark Registration of “ABC BOOKS”

ABC BOOKS applied for word and device marks, respectively.

· Application Can Be Abandoned

1. After filing the application: If ABC BOOKS files the application but fails to submit required documents, pay fees, or correct defects pointed out by the Registry, the application may be treated as abandoned.

2. Examination report stage: If the Registrar raises objections and ABC BOOKS does not file a reply within the prescribed time, the application can be abandoned.

3. Show-cause hearing stage: In the event of a hearing being scheduled but the absence of ABC BOOKS or the lack of submission of written arguments, the petition may be deemed abandoned.

4. Stage of opposition: The application will be deemed abandoned if a third party files an opposition and ABC BOOKS fails to respond within two months.

5. Failure to complete registration formalities: Even after acceptance, if ABC BOOKS does not finish the required steps, such as responding to notices, the application may be abandoned.

· Registered Trademark Can Be Abandoned

1. After filing the application: If ABC BOOKS submits the application but does not provide necessary documents, pay fees, or fix issues noted by the Registry, the application may be treated as abandoned.

2. Examination report stage: If the Registrar raises objections and ABC BOOKS does not file a reply within the prescribed time, the application can be abandoned.

3. Non-use of the trademark: If ABC BOOKS does not use the word mark or logo for a continuous period of five years, the registered trademark may be removed from the Register for non-use.

4. No authentic (bona fide) use: The trademark may be deemed abandoned if it is not used honestly or profitably in connection with the registered goods or services.

5. Non-renewal of registration: If ABC BOOKS does not renew the trademark after the validity period as per S.25 of The Trademark Act, the registration may lapse and be treated as abandoned.

6. Voluntary abandonment: The trademark may be deemed abandoned if ABC BOOKS discontinues using it and clearly intends not to use it in the future; it may be treated as abandoned.

7. Removal on application by a third party: If ABC BOOKS has abandoned or ceased to use the registered trademark, any third party may request its removal.

Conclusion

In conclusion, trademark abandonment has serious legal and commercial consequences, especially during business changes when brands may be temporarily discontinued or overlooked. Failing to meet procedural requirements or to use a registered trademark in a genuine way can lead to a complete loss of legal protection under the Trade Marks Act, 1999. Having abandoned a trademark, whether pending registration or registered, it means that the trademark holder loses any priority, right to enforcement, and exclusive ownership. This means that, apart from being at risk of any form of intellectual property violation and market confusion, financial losses can also be incurred. For a business to avoid such losses, it has to be keen on using and being compliant with the trademark even with any form of business restructuring.