Section 47 Trade Marks Act: Trademark Removal for Non-Use

INTRODUCTION

A trademark in India lasts for 10 years from the date at tlilsq and can be renewed every 10 years. A trademark can therefore exist perpetually if it is renewed periodically. However, the owner must use the mark continuously. Otherwise, any third party can apply to the Indian Trade Marks Registry to remove it.

This article explains when a trademark becomes vulnerable to removal for non-use, who counts as a “person aggrieved”, what bona fide use means, how the removal process works, and what owners and challengers should do.

Quick answer: Under Section 47 of the Trade Marks Act, 1999, a trademark can be removed from the register if a continuous period of five years or more has elapsed from the date it was actually entered in the register and there has been no bona fide use during that period. The mark is not cancelled automatically. A person must apply for removal.

Grounds for Removal Under Section 47

Under Section 47 of the Trade Marks Act, 1999, a trademark can be removed from the register if both of the following conditions are met:

1. A continuous period of five years or more has elapsed from the date the mark was actually entered in the register, and

2. There has been no bona fide use of the mark during that period.

How the Three-Month Cut-Off Works

The relevant period is assessed up to a date three months before the removal application.

Example: A trademark is registered on 1 January 2020, and the owner has not used it since. Another party applies for removal on 1 April 2026. The law looks at use up to 1 January 2026, which is three months before the application.

Who Can Apply for Removal? The “Person Aggrieved”

The application must generally be made by a “person aggrieved”, for example, a business affected by the continued registration of a trademark.

In the landmark case Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. (2003), the Supreme Court held that a “person aggrieved” is someone who has a substantial interest in the use of the trademark, or whose legal rights are affected by the mark’s presence on the register.

What Does Bona Fide Use Mean?

Section 2(2)(b) of the Act gives the word “use” in relation to goods a broad meaning. It covers use of the trademark on the goods or in any physical or other relation to the goods.

The Supreme Court’s decision in Hardie Trading is particularly significant here. The Court held that “use” should not be narrowly confined to use on the goods or to actual sales. Depending on the circumstances, the following commercial steps connected with the goods may constitute use:

• advertising

• invoices

• orders

• other commercial steps connected with the goods

Defences Against Non-Use Cancellation

A trademark owner facing a removal application may rely on the following:

• Special circumstances: The non-use was due to circumstances beyond the owner’s control, such as war, import restrictions or regulatory approvals. Section 47(3) specifically recognises this.

• Use in a different form: The mark was used in a slightly different form that keeps its distinctiveness alive and helps distinguish it from other brands. It may then still be considered in use.

• Preparations for use: The owner can show that they have genuinely been taking steps to use the mark in the near future.

Resumed Use: Why Last-Minute Use Is Treated With Suspicion

Use that begins during the three-month period before the application is treated with suspicion. So is use that appears to have been started merely to avoid cancellation. It can be seen as a move made only to create evidence of use before a challenge.

Where to File: Forum for Removal Applications

The Intellectual Property Appellate Board was abolished in 2021 by the Tribunals Reforms Act. Applications are now filed before the Registrar of Trade Marks or the relevant High Court.

Guidance for Trademark Owners

• Keep invoices, advertisements, packaging and similar records that show use of the trademark.

• Ensure that licences are properly documented.

• Review every trademark periodically so that none remains unused.

• Be prepared to explain prolonged non-use if special circumstances exist.

Guidance for Challengers

• Check the date of entry in the register and calculate the non-use period carefully.

• Gather irrefutable evidence of non-use.

• Be prepared to prove that you are a “person aggrieved”.

Trademark Removal Process: Step by Step

1. File the application. The person aggrieved files an application with the Registrar, setting out the grounds and supporting proof for removal.

2. Notice to the trademark owner. The Registrar sends the owner a notice of the challenge and gives them a chance to respond.

3. Owner’s response. The owner submits evidence of use or gives reasons for non-use.

4. Hearing and decision. The Registrar conducts a hearing and announces the decision.

Conclusion: Use It or Risk Losing It

A trademark becomes vulnerable under Section 47 of the Trade Marks Act, 1999 when the non-use requirements are met, especially where there has been no bona fide use for five years or more. A trademark is not automatically cancelled after five years. A person must apply for removal. The practical lessons are clear. Owners should keep invoices and advertisements that show use of the mark and make sure licences are properly documented. Challengers should collect evidence of non-use and calculate the non-use period carefully. Non-use cancellation helps keep the trademark register clean. It stops the hoarding and trading of trademarks and encourages their active use in commerce.

KEY TAKEAWAYS

• A trademark lasts ten years from filing and can be renewed indefinitely, but the owner must use it.

• Section 47 allows removal where there has been no bona fide use for a continuous period of five years or more from the date of entry in the register.

• Removal is not automatic. A person must apply.

• Use is assessed up to a date three months before the removal application.

• A “person aggrieved” has a substantial interest in the mark’s use, or legal rights affected by its registration.

• “Use” is broad and can include advertising, invoices, orders and other commercial steps connected with the goods.

• Defences include special circumstances (Section 47(3)), use in a slightly different form, and genuine preparations for use.

• Use that begins during the three-month period, or only to avoid cancellation, is treated with suspicion.

• Applications go to the Registrar of Trade Marks or the relevant High Court, following the abolition of the IPAB in 2021.

• Owners should keep records of use. Challengers should gather evidence of non-use.

FAQ SECTION

1. What is Section 47 of the Trade Marks Act, 1999?
It allows a registered trademark to be removed from the register for non-use.

2. How long can a trademark go unused before it can be removed?
A mark becomes vulnerable if there has been no bona fide use for a continuous period of five years or more from the date it was actually entered in the register.

3. Is a trademark cancelled automatically after five years of non-use?
No. A person must apply for removal.

4. How long does trademark protection last in India?
Ten years from the date of filing, renewable every ten years.

5. Can a trademark last forever?
Yes, if it is renewed from time to time. However, the owner must also use it continuously.

6. What is the three-month rule in non-use cancellation?
The relevant period is assessed up to a date three months before the removal application.

7. Who can file a removal application?
Generally, a “person aggrieved”, such as a business affected by the continued registration of the mark.

8. Who is a “person aggrieved”?
In Hardie Trading (2003), the Supreme Court held that it is someone with a substantial interest in the use of the trademark, or whose legal rights are affected by its presence on the register.

9. What does “use” of a trademark mean under the Act?
Under Section 2(2)(b), use in relation to goods covers use of the mark on the goods or in any physical or other relation to the goods.

10. Does use require actual sales?
Not necessarily. The Supreme Court held that use should not be narrowly confined to use on the goods or actual sales. Advertising, invoices, orders and other commercial steps may qualify, depending on the circumstances.

11. What defences can a trademark owner raise?
Special circumstances beyond the owner’s control, use in a slightly different form, and genuine preparations to use the mark in the near future.

12. What counts as special circumstances?
Examples include war, import restrictions or regulatory approvals. Section 47(3) recognises this defence.

13. Can an owner start using the mark after a challenge is anticipated?
Use that begins during the three-month period, or appears to be started merely to avoid cancellation, is treated with suspicion.

14. Where is a removal application filed?
Before the Registrar of Trade Marks or the relevant High Court, since the IPAB was abolished in 2021.

15. What are the steps in the removal process?
The application is filed, the owner receives notice, the owner responds with evidence of use or reasons for non-use, and the Registrar holds a hearing and decides.

16. How can owners protect against a non-use challenge?
Keep invoices, advertisements and packaging, document licences properly, and review the trademark portfolio regularly.

17. What should a challenger prepare?
The date of entry in the register, a careful calculation of the non-use period, solid evidence of non-use, and proof of being a “person aggrieved”.

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