Abandonment in trademark law in India means losing rights or status because of inaction, not using the mark or not following legal steps. Under the Act, abandonment isn’t a loose idea but a specific result caused by certain actions or failures. It keeps the trademark registry active and clear of unused marks. For example, if someone applying for a trademark doesn’t follow through then their application may be marked as abandoned which makes the trademark available for others. Registered trademarks can also be abandoned if they are not renewed or used for a long time. This system balances the needs of trademark owners with the public’s access to available trademarks. This article explains what abandonment means in trademark law under the Trade Marks Act, 1999 along with the rules, processes, effects, and case laws to show how abandonment works and what can be done about it.
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Abandonment in Trademark Applications
Abandonment often happens during the trademark registration process. The Trade Marks Act, 1999, and the Trade Marks Rules, 2017, set strict deadlines for applicants to respond to official notices. Not meeting these deadlines can lead to an application being abandoned.
Section 132 of the Act allows the Registrar to mark an application as abandoned if the applicant doesn’t move it forward. This section says that if an applicant or appellant fails to act on their application or appeal, the Registrar can send a notice asking them to fix the issue within a set time. If they don’t fix it, the application is considered abandoned. This rule shows the Registry’s firm but fair approach to keeping things efficient.
A common reason for abandonment is not responding to an examination report. Under Rule 33 of Trade Marks Rules, 2017, applicants must reply to any issues raised in the report within one month, though this can sometimes be extended. If they don’t respond, the application is automatically abandoned. This helps the Registry to manage its workload. For instance, recent notices from the Intellectual Property India office showed thousands of applications marked as abandoned because applicants didn’t comply.
Another key point is during opposition proceedings, it is covered by Section 21 of the Act which means that when a trademark application is advertised, others can oppose it within four months. If the applicant doesn’t file a counter-statement within two months after getting the opposition notice, as stated in Section 21(2), their application is deemed abandoned. On the other hand, if the opponent doesn’t provide evidence to support their opposition within two months as per Rule 45(1), their opposition is abandoned, and the application moves forward. Rule 45(2) adds that no further evidence is allowed if deadlines are missed, leading to abandonment of the opposition.
Abandonment in applications stresses the need to act promptly. Failing to act whether due to mistakes, money issues, or strategy can stop the registration process. In 2023, the Trade Marks Registry issued notices to abandon nearly 98,000 applications and 82,000 opposed applications because of missing replies or counter-statements. This large-scale action shows the Registry’s effort to clear backlogs but also raises questions about fairness, as some applicants may face technical or other challenges.
Consequences of Abandonment for Applications
When an application is abandoned, it’s removed from the official process. The applicant loses the priority tied to their filing date. The mark becomes available for others to apply for, which can cause conflicts if someone else registers a similar mark later. Applicants can reapply, but they start from scratch and risk others claiming the mark first.
Revival is possible in some cases. Section 131 of the Act lets the Registrar extend deadlines even after they have passed, if there is a good reason for the delay. Courts have said this power should be used fairly. In the case of Kaira District Cooperative Milk Producers Union Ltd. & Anr. vs. Registrar of Trademarks & Ors., the Delhi High Court ruled that the Registrar must consider honest mistakes or external delays when deciding. However, reviving an application requires a formal request using Form TM-M and paying a fee, and it’s not guaranteed.
Abandonment in applications encourages applicants to act quickly. Lawyers should advise clients to respond on time, perhaps by setting reminders or hiring agents to track progress.
Also, Get to Know About Infringement of Geographical Indication.
Abandonment in Registered Trademarks
Abandonment also applies to registered trademarks, mainly through not using the mark or not renewing it. This ensures trademarks don’t block terms forever if they’re not used in business.
Section 47 of the Act deals with removal for non-use. A registered trademark can be removed if it was registered without a real plan to use it and hasn’t been used up to three months before someone applies to remove it. It can also be removed if it hasn’t been used for a continuous five-year period before the application, minus three months.
This rule stops people from “hoarding” trademarks and frees up unused marks for others. For non-use abandonment under Section 47, someone must apply to remove the mark, and the owner must prove they’ve used it or explain why they haven’t, like if government rules or market issues stopped them.
In Patel Field Marshal Agencies vs. P. M. Diesel and Ors., the Supreme Court explained that “bona fide use” means real business use, not just occasional or minor activity. This shows that non-use abandonment is about actual use, not just paperwork.
Not renewing a trademark can also lead to abandonment. Section 25 says a trademark registration lasts 10 years but can be renewed forever if fees are paid. If it’s not renewed within six months after it expires (the grace period), the mark is removed from the register. Restoration is possible within one year under Section 25(4), but after that, the mark is considered dead or abandoned, and others can use it.
Abandonment for registered marks shows that owners must keep using and renewing their trademarks. If they don’t, they could lose their exclusive rights, and using the mark later without re-registering could lead to infringement issues.
Read about What is a Trade Secret?
Consequences and Revival for Registered Marks
When a registered trademark is abandoned, it loses legal protection. Competitors can use similar marks without being sued for infringement. This can harm the brand’s value and confuse customers. However, the Act allows ways to revive a mark. For non-use removals, owners can show proof of use or re-register if the mark is removed. For lapsed renewals, restoration applications must show the lapse was unintentional.
Case laws also show how this works. In Sunrider Corporation vs. Hindustan Lever Limited and Ors., the Delhi High Court stressed the need to reduce delays, affecting how abandonment is handled. In Sahil Kohli vs. Registrar of Trade Marks, the Intellectual Property Appellate Board (now closed) confirmed that Section 131’s extension powers can overcome strict abandonment rules, promoting fairness.
Others can benefit from abandoned marks. Under the Act, an abandoned trademark has no protection, and anyone can register it if it meets the requirements. However, they should be careful, as the original owner might still have common law rights (like passing off) if they have goodwill.
Summary
The abandoned meaning in trademark under the Trade Marks Act, 1999, shows that trademark rights depend on active effort. Whether it is missing deadlines in applications or failing to use or renew registered marks, abandonment keeps the registry clear and supports fair competition. While losing rights is serious, options like extensions and restorations give a chance to fix things. As the market changes, staying proactive against abandonment makes sure of strong brand protection. In short, the abandoned meaning in trademark law reminds us that rights must be actively maintained through consistent effort.
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Abandoned Meaning in Trademark: FAQs
Q1. What is trademark status abandoned?
A trademark is "abandoned" when the owner stops using it or fails to follow legal steps, losing its protection.
Q2. What is an example of trademark abandonment?
Not responding to an examination report within a month can lead to a trademark application being marked abandoned.
Q3. Is it possible to use an abandoned trademark in India?
Yes, you can apply to register an abandoned trademark if it meets requirements, but check for any remaining goodwill.
Q4. What does it mean when a patent says abandoned?
A patent is "abandoned" when the applicant doesn’t meet deadlines or pay fees, losing the chance for patent protection.
