When Does a Trademark Becomes Vulnerable to Removal Because of Non‑Use?

Introduction

A trademark is a right that lasts for ten years from the date the trademark was filed, and it can be renewed every ten years. Therefore, a trademark can exist perpetually if it is renewed from time to time. However, the owner must use the trademark continuously, i.e., continuous exploitation of the mark. Otherwise, any third party can file an application before the Indian Trademark Registry to remove the trademark.

Grounds of Removal under Section 47

Under Section 47 of the Trade Marks Act, 1999, a trademark can be removed from the register if

1. A continuous period of 5 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.

Importantly, the relevant period is assessed up to a date three months before the removal application. Suppose a trademark was registered on 1 January 2020, and the owner has not used the trademark since. If another party applies for removal on 1 April 2026, the law looks at use up to 1 January 2026 – i.e., three months before the removal application.

Who Can Apply?
The application must generally be made by the “person aggrieved”, for example, a business that is affected by the continued registration of a trademark. The landmark Hardie Trading case of 2003, decided by 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 existence of the trademark in 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, covering 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 Ltd. v. Addison's Paint & Chemicals Ltd. is particularly significant in this regard. The Court held that "use" should not be narrowly confined to use on the goods or actual sales. Depending on the circumstances, activities such as advertising, invoices, orders and other commercial steps connected with the goods may constitute use.

Defences Against Non‑Use Cancellation
- Special Circumstances: If the non‑use was due to circumstances beyond the control of the trademark owner, such as war, import restrictions or regulatory approvals. This is specifically recognised in Section 47(3).
- Used in a different form: If the trademark has been used in a slightly different form, which keeps its uniqueness alive and helps distinguish it from other brands, it may still be considered in use.
- Preparations for use: If the trademark owner can show that they have been genuinely making steps to use the trademark in the near future.

Resumed Use
Any use that begins during the three‑month period or that looks as if it was started merely to avoid cancellation is treated with suspicion. It can be seen as a move made only to create evidence of use before a challenge.

Forum
Since the abolition of the Intellectual Property Appellate Board in 2021 by the Tribunals Reforms Act, applications are filed before the Registrar of Trade Marks or the relevant High Court.

Guidance For Owners
- Keep invoices, advertisements, packaging, etc. that show the use of the trademark.
- Ensure that the licences are properly documented.
- Periodically review every trademark so that none remain unused.
- Be prepared to explain prolonged non‑use if any special circumstances exist.

Guidance For Challengers
- Check the date of entry in the register and carefully calculate the non-use period.
- Gather irrefutable evidence of non‑use.
- Be prepared to prove that you are the “person aggrieved”.

Application Process
1. Filing the application: The person aggrieved must file an application with the Registrar that contains proofs and grounds for cancellation.

2. Notice to Trademark Owner: The Registrar sends a notice to the owner informing him of the challenge and giving the trademark owner the chance to respond.
3. Owner’s response: The trademark owner gives evidence of use or gives reasons for non-use
4. Hearing and decision: the Registrar conducts a hearing and announces the decision.

Conclusion
Under Section 47 of the Trade Marks Act, 1999, a trademark becomes vulnerable when it satisfies the requirements related to non-use, especially when there is no bona fide use for more than 5 years. The trademark is not automatically cancelled after 5 years. A person must apply for removal.

The practical lessons are clear: trademark owners should keep invoices and advertisements that show the use of the trademark and make sure licences are properly documented. Trade mark challengers should collect evidence of non-use and calculate the non-use periods carefully.
The non-use cancellation action under the Trade Marks Act, 1999, plays a role in keeping the trade mark register clean. It stops hoarding or trading of trademarks and encourages their active use in commerce.

© 2025. All rights reserved.