In a highly competitive business world, trademarks represent more than just a name or logo, but rather can be viewed as assets of the company, forming the identity of the brand, establishing trust between the public and establishing mark recognition in the marketplace. Employers and business owners continue to evolve and look for opportunities to register trademarks once held by others. One of the most common questions among individuals looking to register a trademark is, "Can I transfer ownership of a mark that was once registered?" More specifically, this question is important in India, where the trademarks registry contains three primary statuses for marks - Deleted, Abandoned and Withdrawn. However, many applicants believe that when a mark is deleted from the register it becomes available for re-registration; but this view has different legal interpretations. This article will provide detailed information about what it means for a trademark to be "deleted," whether a deleted mark can be re-registered, the risks involved in doing so, and how the Trademark Registration Service process works in these matters. The intent of this blog is to give small business owners, new comers to the market and brand managers a clearer understanding of how the Trademark Registration Service works in India, as well as assist with making appropriate decisions when registering their trademarks.
Understanding Trademark Status in India
There is a separate status assigned to registered/unregistered marks by India’s Trademark Registry in relation to their legal rights/statute of the marks, as well as whether that mark can be protected/enforced. The trademarks have several statuses and those are just a few of them.
1. Applied/New Application: The mark has been filed and is currently under examination.
2. Objected: There was some objection made by an examiner against the mark, whether it be under the Trade Marks Act, 1999, or any other substantive law.
3. Opposed: Someone has filed an opposition against your mark since it was published in the Trade Marks Journal.
4. Registered: The mark is legally protected and capable of being enforced.
5. Abandoned: There has been no response from the applicant to a request for information or failure of the applicant to comply with statutory requirements.
6. Withdrawn: The applicant has voluntarily withdrawn their application.
7. Refused: The Registrar of Trade Marks has refused the application following its examination/hearing.
8. Removed: The mark was removed from the Register due to non-renewal or cancellation.
The removed status of the registered mark creates confusion for many applicants and opens them up to possible exposure to risk.
What Does “Remove” Status Mean in Trademark Registration?
The trademark's removal from the official trademark register is indicated by the 'Removed' status of the trademark. A trademark may be removed from the register in the following situations:
1. The registered trademark's 10-year maximum term has expired, and it was not renewed.
2. Non-use cancellation occurred when the trademark has not been used in a party's business or business operations for a period of 5 years 3 months.
3. Rectification proceedings are successful for a person who challenges the validity of the trademark.
4. Loss of compliance with legal and/or procedural requirements.
When a trademark is removed, it is no longer entitled to statutory rights under the Trade Marks Act, 1999. However, the act's removal does not necessarily extinguish all rights associated with that mark.
Can You Apply for Trademark Registration if the Wordmark Is Removed?
Short Answer: Yes, But Only Under Certain Conditions
In India, you are permitted to file for Registration as a trademark for an existing wordmark indicated as having been “Removed.” However, the journey from filing an application to being granted a trademark is not automatic; many different legal and practical issues play a role in determining whether the request will be accepted.
The trademark registry of India allows for any new applications to be made on a removed mark; however, the registrar will be careful to assess the following:
• Whether the trademark is still being used by the previous owner
• Whether the trademark has developed goodwill or has gained recognition
• Whether the registration of the trademark would confuse or mislead members of the public.
In summary, a trademark marked “removed” would provide the ability to seek registration but would not guarantee that it would be granted.
Is a Removed Wordmark Considered Available for Trademark Registration?
The short answer is: It depends.
The removal of a mark from the Trademark Registration in India does not mean that all legal connection to that mark has been severed. A mark that has been removed from the Register may still hold residual goodwill as well as common law rights (that is, rights based upon its past use) even after it has been removed from the Trademark Register.
The following are some important considerations when determining your eligibility to apply for a removed wordmark:
1.The reason for removal
when a mark is removed from the register due to non-renewal or procedural oversight, the prior owner may still have a claim based on prior use of the mark. However, if the mark was removed because it had been abandoned or withdrawn early, then there is a lower risk of challenge by the original owner.
2. The amount of prior use and the level of presence in the marketplace.
Trademark rights in India are primarily based on actual trading activity rather than on the basis of registration alone. If a prior owner is continuing to use their wordmark in commerce after the mark's removal, they may still be able to oppose your application to register that mark.
3. Similarity of goods or services
If you plan to use the removed wordmark on goods and/or services that are identical or similar to those of the previous owner, you are more likely to face an objection to your application, or an opposition in a hearing, from the previous owner.
4. Time Gap Since Removal
A significant time gap with no commercial use by the previous owner reduces the risk of legal disputes. However, this must be verified carefully through market research.
Legal Risks of Registering a Removed Wordmark
In order to assess whether or not it is wise for you to invest in branding or file a new application, it is necessary to evaluate the associated risks both from an audience perspective as well as from a legal perspective.
1.Prior Use Rights
Prior use rights continue to exist in Indian Trademark Law, which provides for those who can demonstrate prior use of a trademark prior to an application for registration being filed. Thus, even if an applicant has had their mark removed from the Register of Trade Marks, they may still bring common law actions against a new applicant if they can still be shown to have used the mark in trade.
2. Chances of being Objected to by the Registrar
A trademark examiner may object to the application for the following sections:
If the mark that has been removed is a well-known mark or has a strong association with a particular company or person, it will be very likely to be the basis of an objection from the trademark examiner.
3. Opposition to Application from Third Parties
After the applicant’s application has been published, any interested party, including the prior registered owner of the mark, can file an opposition to the application. This could cause significant delays in the process and impose increased legal costs upon the applicant in connection therewith.
When Is It Safer to Apply for a Removed Trademark?
It might be reasonably safe to apply for a redefined wordmark under certain conditions:
However, in all scenarios of unknown or unclear ownership history, you must perform your professional due diligence and obtain legal counsel before pursuing any actions.
Importance of Trademark Search Before Filing
The foundation of a successful application is a thorough trademark search. Before beginning our Trademark Registration Service, you will need to conduct the following searches:
A thorough search will allow you to assess the potential risks associated with registering your trademark, anticipate objections, and enhance your likelihood of getting approved.
Trademark Registration Service Process for Removed Wordmarks
Understanding the Trademark Registration Process helps applicants set realistic expectations.
Step 1: Trademark Search and Risk Analysis
A professional search is conducted to evaluate availability and legal risks associated with the removed mark.
Step 1: Conducting a Trademark Search and Risk Analysis
A comprehensive search is performed by a specialist to determine if there are any available trademarks and/or legal vulnerabilities associated with the previously aborted trademark.
Step 2: Filing the Trademark Application
A trademark application is submitted to the appropriate class of goods and/or services as prescribed under the Trade Marks Act, 1999, and it describes the company and the manner in which they use their mark.
Step 3: The Trademark Office Will Review the Application
The examiner (trade mark registrar) will assess the trademark application and determine whether or not to raise an objection regarding the mark's acceptance. If the mark has been previously rejected, the examiner may raise an objection.
Step 4: Responding to the Trademark Office's Examination Report
A legal document is drafted to respond to the examiner's objections and counters them.
Step 5: Publication in a Trademark Journal
If a trademark is accepted, it will be published for 30 days in a Trademarks Journal to allow for any opposition to be filed.
Step 6: Issuance of the Trademark Registration Certificate
If an opposition is not filed, or if any opposition filed is successfully defended, the trademark registration certificate will be issued, completing the entire Trademark Registration Service Process.
The entire Trademark Registration Process can take between 12 months and 24 months to complete depending on the difficulty of the trademark being registered.
Trademark Registration in India: Legal Perspective
Trademark protection is governed under the Trade Marks Act of 1999 in India. The Act is supplemented by Rules that were made under it (the Trade Marks Rules). Removed marks may be re-registered in terms of the Trade Marks Act of 1999 and the Trade Marks Rules of 1999; however, the Trade Marks Act of 1999 provides strong protection for:
1. Consumer interests
2. The rights of prior users
3. The goodwill of brands
All applications are considered on their merits.
Difference Between Removed, Abandoned, and Withdrawn Trademarks
Clarifying your eligibility is an important step before applying to register a trademark, so it is significant that you do not confuse the various trademark designations of "Removed," "Abandon," and "Withdrawn."
1.Removed Trademark: A Removed Trademark is a trademark that has been previously registered but has now been removed from the trademark registry, usually for non-renewal or non-use. When a trademark is removed, the statutory rights of the original owner generally cease.
2.Abandoned Trademark: An abandoned trademark is one that has application but has not completed an active effort by the applicant, such as by failing to file timely responses to examination reports.
3.Withdrawn Trademark: A withdrawn trademark is a trademark that has been voluntarily withdrawn by the applicant prior to its ultimate registration.
Out of the three, removed trademarks have the greatest likelihood of being able to be re-registered (subject to appropriate legal investigation).
Strategically Considerations Before Applying to Register
There are a number of strategic considerations that you should be aware of with respect to your brand strategy and your potential target markets before applying to register a trademark. Here they are:
Often, it may make more sense to create a new and unique mark, than to revive a removed mark.
Legal Implications of Registering a Removed Trademark
While the law allows fresh applications for removed marks, legal caution is essential.
Residual Goodwill Risk
The law permits new submissions for removed trademarks, but you must exercise caution when doing this.
A registered removed trademark may be considered still in existence if its prior owner is using it in the market; thus, they may have some common law rights to the trademark and, if your trademark is similar in any way to theirs, they could potentially bring an action against you for passing off.
Similarity to Existing Trademarks
If the trademark you are trying to have re-registered is similar to another existing registered trademark, you may receive an objection in accordance with Sections 9 and 11 of the Trademarks Act.
Opposition by Third Parties
Once your trademark is published, any party having an interest in your trademark may oppose it once they believe that your trademark infringes upon their rights.
It has therefore been strongly advised to use a professional trademark registration service.
A comprehensive Trademark Search underpins the Lifetime Process of Trademark Registration. This includes the following aspects:
• Checking the Trademark Registered Database;
• Evaluating the Marks that have been cancelled, abandoned or objected too;
• Reviewing the Auditory & Visual Similarity of these same Marks;
• Reviewing the use of these Marks in the Industry.
A Professional Trademark Registration Service will ensure that this Search is performed technically and strategically with consideration for future risk of litigation.
Common Scenarios Where Removed Trademarks Are Re-Registered
In some real-life situations, re-registration may be appropriate, such as:
In each case, a specific legal approach is needed to resolve the issue.
Advantages of Registering a Removed Wordmark
Correctly managing licensing for an already removed mark can yield benefits, including:
• Brand Recognition possible faster due to familiarity
• Less Likely to Find an Unavailable Name
• Able To Revive/Licensed (Valuable Brand) Identity
• Statutory Protection by Registering the Trade Mark.
(The above Benefits Only Apply Where Appropriate Legal Basis checked.)
Common Mistakes to Avoid
When you're applying for a trademark that has been removed, many applicants make mistakes such as:
Using a Trademark Registration Service will help avoid these costly errors.
Conclusion
Trademark registration of a mark with a “Removed” status could be a viable business strategy provided you are clear, cautious and legally informed about how to carry out the trademark registration process. Just because the trademark is removed from the trademark registry does not mean the mark will work in the marketplace as a business identifier because the actual usage of the mark will depend on the prior use of the trademark in the marketplace, goodwill that still exists from prior use of the trademark and the similarity of your mark to already registered trademarks. If you simply rely on the registration status of a removed mark in the trademark registry without performing the appropriate analysis, you could be exposing your company to unneeded litigation and brand risk. By doing a full trademark search, understanding the legal implications related to the trademark and utilizing a structured Trademark Registration Service Process, you can greatly increase your ability to successfully obtain the mark you want. Most importantly, by using a professional Trademark Registration Service, you will ensure that your Trademark Registration application in India will be legally compliant and strategically aligned with your long-term brand protection objective; this in turn gives you the security needed to grow your business under a legally secure brand identity.
FAQs
1. Can I legally use a trademark that shows “Removed” status?
A removed trademark is not protected under statutory law, but using it may still expose you to passing-off claims if the earlier owner continues to use it.
2. Does removed status mean the trademark is free for anyone?
No. Removed status only means it is not on the register. Common law rights and reputation may still exist.
3. Will the trademark registry object to a removed mark?
Yes, objections are common, especially if the mark was previously well-known or distinctive.
4. How long should I wait after removal to apply?
There is no fixed waiting period, but a longer gap with no commercial use reduces risk.
5. Is professional help necessary for such applications?
Yes. A professional Trademark Registration Service helps navigate legal complexities and improves approval chances.
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