Understanding How Trademarks Can Be Removed from the Register in India

A registered trademark is not a permanent entitlement. While registration under the Trade Marks Act, 1999 gives a proprietor exclusive rights over a mark, those rights come with ongoing obligations – to renew the mark, to use it genuinely, and to preserve its distinctiveness. Fail to meet these obligations, and the trademark can be removed from the register entirely. Understanding exactly when and how this happens is essential for anyone who owns or intends to own a trademark in India.

The trademark register and why removal matters 🔗

The Trade Marks Registry in India maintains a register of all active trademarks. This register is not just a record – it is the basis on which ownership, exclusive rights, and legal protection rest. When a trademark is removed from this register, the proprietor loses all statutory rights attached to that registration, including the right to sue for infringement. The removal of a trademark, therefore, is a serious legal consequence and can arise through several distinct grounds under the Act.

Failure to renew: the most common route to removal 🔗

Every trademark registration in India is valid for ten years from the date of application. After that, it must be renewed – and this cycle repeats indefinitely. Under Section 25 of the Trade Marks Act, 1999, the Registrar is required to send a notice to the registered proprietor before expiry, informing them of the upcoming deadline and the conditions for renewal. If the proprietor fails to comply, the Registrar may remove the trademark from the register.

However, the law provides a window of relief. Even after expiry, the trademark will not be immediately removed if the proprietor files the renewal application in the prescribed form and pays the required fee along with a surcharge within six months of the expiration date. Beyond that six-month window, a further restoration is possible: under Section 25(4), the Registrar may restore the trademark to the register if an application is made after six months but within one year of expiry, provided the Registrar is satisfied that it is just to do so. This restoration renews the registration for another ten-year period.

There is also a transitional protection built into Section 26 of the Act. Even after a trademark is removed for non-renewal, it is treated as still being on the register for the purposes of any new application for a similar trademark – but only for one year after removal. This protects against third parties immediately swooping in to register a confusingly similar mark after a lapse in renewal.

Removal at the request of the registered owner 🔗

A proprietor may voluntarily seek removal of their own trademark from the register. This is sometimes called surrender of a registered trademark and is permitted under Section 57 of the Trade Marks Act. Common reasons for voluntary surrender include business closure, a decision to rebrand, or redundant marks arising after a merger or acquisition.

The procedure requires the proprietor to submit Form TM-P along with the prescribed fee to the Registrar. The Registrar does not accept every surrender unconditionally – if there are registered users of the trademark, or if the mark is involved in ongoing legal proceedings, the Registrar may impose conditions before accepting the surrender. This safeguard exists to protect the interests of licensees and others who may be relying on the continued registration of the mark.

Failure to use: removal under Section 47 🔗

This is arguably the most litigated ground for trademark removal in India. Section 47 of the Trade Marks Act, 1999 allows any aggrieved person to apply to the Registrar or the Appellate Board for removal of a registered trademark on grounds of non-use. The rationale is straightforward: a trademark that is not being used in trade does not deserve to block others from entering the market.

What constitutes non-use? 🔗

Section 47(1) lays down two distinct grounds. First, that the trademark was registered without any bona fide intention on the part of the applicant to use it in relation to the goods or services for which it was registered, and that there has in fact been no genuine use of the mark up to at least three months before the application for removal. Second, that a continuous period of five years has elapsed from the date of actual entry of the mark in the register, during which the mark was not put to any bona fide use.

The burden of proof initially lies on the applicant seeking removal to demonstrate non-use. Once non-use is established, the burden shifts to the proprietor to justify why the mark should be retained. This was affirmed in Cycle Corporation of India Ltd. v. T.I. Raleigh Industries (P) Ltd., where the Supreme Court held that if a proprietor claims the benefit of special circumstances, the onus to prove those circumstances lies on the proprietor.

The special circumstances exception 🔗

Section 47(3) carves out a protection for proprietors who genuinely could not use their trademark due to factors beyond their control. If non-use results from special circumstances in the trade – including legal restrictions or regulations imposed on use of the mark in India – the application for removal will not succeed, provided the non-use was not intended as an abandonment of the mark. In Hardie Trading Co., the court accepted that import restrictions that made it economically unfeasible to bring products into India constituted special circumstances, and refused to remove the trademark from the register.

In contrast, in Pfizer Products Inc. v. Rajesh Chopra, the Delhi High Court was confronted with a challenge to the trademark “Geodon” on grounds that the plaintiff had failed to demonstrate use in India since registration. The court ultimately ruled in favour of the plaintiff, noting that as a global player selling in over 40 countries, the balance of convenience lay in retaining the registration – but the case illustrates how seriously Indian courts treat the question of use.

Cancellation on account of nullity: Section 57 🔗

Section 57 of the Trade Marks Act, 1999 empowers the Registrar or the High Court to rectify the trademark register by cancelling or varying entries that should not have been made in the first place. This is commonly referred to as cancellation on account of nullity – the idea being that the registration was void from the outset.

An aggrieved party may file a rectification petition on Form TM-O before the same Trade Marks Registry where the original application was filed. In cases where an infringement suit is pending before a civil court and the defendant is contesting the validity of the plaintiff’s trademark, the power to hear the rectification application shifts exclusively to the Intellectual Property Appellate Board (IPAB).

Grounds for cancellation under Section 57 🔗

The grounds are broad and cover a range of situations where the register cannot be allowed to carry an inaccurate or unjust entry. These include: contravention of a condition entered in the register; absence or omission of an entry such as a disclaimer, condition, or limitation; registration obtained without sufficient cause (for instance, through fraud or misrepresentation, or where the mark was already registered by another proprietor); an error or defect in any entry; and a trademark wrongly remaining on the register because it is contrary to the provisions of the Act or likely to cause confusion among the public.

Section 57(4) gives the Registry and the IPAB an additional power to initiate rectification suo motu – that is, on their own motion without any application by an aggrieved party. This is an important safeguard to correct errors or injustices that may not come to the notice of affected parties.

In Kabushiki Toshiba v. Toshiba Appliances, the court reinforced that the intention to use a trademark at the time of registration must be genuine and bona fide. If mala fide intentions can be established – such as registering a mark solely to block a competitor – appropriate action including cancellation can follow.

Loss of distinctiveness: when a trademark becomes generic 🔗

Distinctiveness is the foundation of any trademark. A mark must be capable of identifying the goods or services of one enterprise and distinguishing them from those of others. When a trademark loses this quality – typically because it becomes so widely used that the public treats it as the generic name for a product category – it can be challenged for removal from the register.

This phenomenon is known as genericization. Internationally, well-known examples include “Aspirin,” “Escalator,” and “Cellophane,” all of which were once registered trademarks that lost protection after becoming generic. In India, the genericization debate is very much alive. In the landmark case of B.V. Elango Himachalapathy v. M/s. Rank Xerox Limited, the applicant argued before the IPAB that the word “XEROX” had become synonymous with photocopying and had thus entered the public domain as a generic term. However, the IPAB rejected the bulk of the rectification applications, noting that Xerox Corporation had actively campaigned to protect its mark and had periodically renewed the registration without objection. The IPAB observed that Xerox had taken consistent steps to educate the public that the term is a proprietary trademark and not a common descriptive word.

The Xerox case underscores a critical lesson: active enforcement and public education are the primary tools a trademark owner has to resist genericization. Owners must avoid using the mark as a verb or noun themselves, must pursue infringers who dilute the mark’s distinctiveness, and should ensure that there is always a recognized generic alternative for the product or service in question.

Practical takeaways for trademark owners 🔗

The law on trademark removal makes clear that registration is a starting point, not an end. To keep a trademark alive and enforceable, owners must follow a disciplined approach. The key obligations can be summarized as follows: renew the mark on time every ten years; ensure genuine commercial use of the mark in India – a continuous period of non-use exceeding five years and three months from the date of registration exposes the mark to removal under Section 47; actively enforce the mark against unauthorized users and infringers; and take deliberate steps to preserve distinctiveness, such as using the mark consistently as an adjective alongside the generic name of the product.

For those on the other side – competitors or new entrants who find a registered mark blocking their path – the grounds discussed above provide a structured legal pathway. An application under Section 47 for non-use or under Section 57 for rectification/cancellation, filed before the Trade Marks Registry or the IPAB on Form TM-O, is the prescribed route. The key is demonstrating a genuine aggrieved interest: Indian courts have consistently held, including in Dhodha House v. S.K. Maingi and Jupiter Infosys Ltd, that the applicant must show a real, substantial interest in having the mark removed – not merely a speculative or fanciful grievance.

The dynamic nature of trademark rights 🔗

What emerges from all these grounds for removal is a coherent underlying principle: trademark rights are use-based and reputation-dependent. The register is not a permanent ledger of entitlements – it is a living record that must reflect the actual commercial reality of marks in use. A mark that is dormant, fraudulently obtained, technically deficient, or so ubiquitous that it has lost its identity as a source-indicator has no place on the register. The law, through Sections 25, 47, and 57 of the Trade Marks Act, 1999, ensures that the register remains current, credible, and fair to all players in the marketplace.

What do you think? If a trademark owner can prove they could not use their mark due to government-imposed import restrictions, should the non-use period simply pause, or should there be a fixed outer limit beyond which even genuine special circumstances cannot save a registration? And given how easily brand names can slip into everyday language in the social media age, should Indian law adopt a more proactive mechanism – beyond the current rectification process – to address the genericization of trademarks before it becomes irreversible?

References

1. https://www.ipindia.gov.in/writereaddata/Portal/ev/TM-ACT-1999.html
2. https://indiankanoon.org/doc/1017213/
3. https://ssrana.in/ip-laws/trademarks-in-india/trademark-rectification-india/
4. https://blog.ipleaders.in/procedure-for-removal-of-trademark-under-section-47-of-the-trademark-act/
5. https://www.mondaq.com/india/trademark/1026328/trademark-rectification-in-india
6. https://www.lexology.com/library/detail.aspx?g=1e34a836-5c38-484a-9079-62751b8bad2f