Can a Trademark be Removed if the Owner is Not Using it?

The trademark removal process can be complex and often depends on specific conditions. For instance, in India, a trademark must be renewed every 10 years to remain registered, regardless of whether it is actively used. This means that if the owner fails to renew, the trademark will be removed from the electronic register. However, there are other scenarios, such as when a trademark becomes generic, leading to its revocation.

Generic Trademarks: A Historical Insight

Trademarks lose their distinctiveness when they become common nouns. For example, Linoleum, Escalator, and Aspirin were once registered trademarks but lost their status due to generic use. Linoleum and Escalator became generic terms for those products, and as a result, their trademark owners could not prevent others from using these terms freely. Aspirin is a special case, where its use was temporarily banned by Bayer due to World War I, which cut off direct trade in German products.

Three Main Ways to Cancel a Trademark

There are three primary methods to remove a trademark:

1. Failure to Renew

Trademarks must be renewed every 20 to 40 years to maintain registration. If a trademark is not renewed during this period, it is automatically removed from the electronic register.

2. Unenforced Action Against Infringers

Trademark owners must actively take legal action against infringers. If they fail to do so, the trademark may eventually be revoked.

3. Genericide

This occurs when a brand name is used so extensively that it becomes synonymous with a type of product. For instance, Sandusky is a recent example of this phenomenon. Other examples include Band Aid and Kleenex.

Legal Actions and Procedures

To initiate trademark cancellation, it is typically advisable to institute legal proceedings at the Trade Marks Office where the mark is registered. Each country or region has its own set of procedures, and it is crucial to understand the period of non-use that applies in that specific jurisdiction. For instance, in the European Union, the non-use period might be different from other geographical regions.

It is essential to verify whether the non-use period has been met. Some companies may engage in nominal sales or advertising to prevent non-use from being established. Additionally, the registration covers a wide range of goods or services, and if the trademark has not been used for a specific subset of these, it can complicate the process of cancellation.

Most individuals or companies facing a potential trademark cancellation scenario will seek the assistance of a trade mark attorney or agent. These professionals can investigate the matter, assess the chances of success, and guide the client through the necessary legal actions at the Trade Marks Office.

Understanding and navigating the complexities of trademark law can be challenging, so consulting with a legal expert is highly recommended.