Can you lose Trademark Protection by not using the mark actively?

Imagine a situation where you own a trademark for a particular product with a unique name. But you don’t sell that product, don’t advertise it, don’t market it and thus you don’t use it at all and you do this continuously for 5 years or more. So, can you still keep that trademark as yours?

The simple answer is, no, - simply stated – If you won’t use the trademark actively, then the law in India allows anyone else (3rd party) to ask for the trademark to be cancelled.

So, trademark protection is for the trademarks which are put to active use and are not just sitting idle for years

· What does “Use” mean:

Just putting a name on the product doesn’t mean that you’re using it as a trademark. The term use means using the product for actual marketing, advertising the product and using it in any other way that its put in front of the public.

In a case, J.N. Nichols (Vimto) Ltd. vs. Rose & Thistle, the Calcutta HC specified that the use of the product can be even advertising it without it being available for actual sale. But this advertisement or any other use must be genuine ie. it must be for conducting actual business of the trademarked good or service and not just to display the use so as to keep the mark.

So, in India trademark law, a trademark can be revoked or removed if it is not used:

•  For 5 years and 3 months after registration

• For 3 months before the date of application

· Who can apply for your trademark to be cancelled?

Any person or any 3rd party, who is basically aggrieved by the non-use of a trademark by you can file an application for its removal. This can include any competitor who wishes to remove your usage, anyone who wants to actually use the mark in their course of business or anyone who just wants to get the unused mark removed from the register.

In the case of Kia Wang vs. Registrar of Trademarks, the SC held that such an “aggrieved person” who applies for removal of the mark should have proper interest in the trademark or have their legal rights affected because of the same. Including competitors or someone whose interests are affected.

· Proof of Use:

So, what can you, as the owner/proprietor of a trademark, show or do to prevent its non use and prevent the same from cancellation. The owner must show that the trademark has been used either by them or by someone allowed by them to use it.

You don’t have to submit the proof of use on a regular basis, this has to be only done in case of a challenge by someone else. The main thing is that, there must be actual use and not just blocking the mark to prevent use of it by someone else.

The following can be done or shown as a proof of something which is done under the name of the trademark :

Invoices of products or services

• Using trademark on website or social media for business purposes

• Receipts of sale of products or any service

• Any advertisement or promotion done

•  Images of the actual product with trademarked name on it

• Use in emails or some form of marketing

• Affidavit from consumers, retailers, marketers, distributors etc.

· Reason for not using:

The owner of a trademark can put up various defenses if any action is put up against them for cancellation of the trademark. The owner can contend the following:

Special Circumstances:

These include any circumstances which were not in the control of the owner and made it such that the trademark couldn’t be used. This can be in various situations such as:

• If the proprietor cannot use the trademark because of any sort of restriction imposed on its use by any law

•  If there any restrictions imposed on the import or export of the trademarked good or service

• In very rare situations, non-use in case of any war breaking out or in case of some form of natural disaster are also justified under special circumstances

•  If the proprietor is waiting for approval for transporting and selling their product

Form of Use:

If the trademark was actually used but in some slightly different form by the owner, then courts can excuse the situation of non-use. But this use in different form must not hinder or change the character of the good or service that differentiates it from other.

Eg: a trademark named “SunGlow” has been selling sunscreens. But, on their product packaging, they have been using “SunGlow Naturals” this still may count as the use of the trademark in a different form, not changing its original and essential character.

Preparations to Use:

If the proprietor shows that they have done actual work and done preparations to finally launch the product in the market to use the trademark in the future, the court may allow this as a defence.

For Eg. In a situation, a startup , after the registration of a trademark for a product, they haven’t sold anything even years after the registration of the trademark but have done the following:

• Built a facility for manufacturing

•  Signed various vendor agreements

• Advertised their product for upcoming launch etc.

All these will constitute as preparations to use and will prevent the cancellation of a trademark on the basis of not using it.

In Conclusion, the registration of a trademark provides various rights upon the owner for its use, but it also imposes the duty of active use. Reserving the name for use in the future and not doing anything that leads up to that future use or non-public presence etc., might lead to the cancellation of the trademark.

The companies, startups registering the trademarks, must register them to be treated as a living asset, and must be actively used in branding, marketing, sales etc. which leads to establishment of proof of use and along with that, also strengthens the trust of the consumer

Thus, proper trademark management is important, mainly for businesses that want to grow and expand, even in the international markets and for that, strategic brand use and documentation of the same must be done by entrepreneurs.

· Citations :

• J.N. Nichols (Vimto) Ltd. vs. Rose & Thistle: AIR 1994 CALCUTTA 43

• Kia Wang vs. Registrar of Trademarks: C.O. (COMM.IPD-TM) 2/2021 & I.A. 9633/2021