NON-USE AS A GROUND FOR REVOCATION OF TRADEMARK[4]:
Under the express provision of Section 31(1) of the Trademark Act, 2004, a registered trademark may be removed from the Register of Trademarks in relation to the specific products for which the mark is registered. Such revocation may be initiated through an application by any party with a direct interest, with respect to the court or the Registrar, at the discretion of the applicant. The grounds for removal are as follows:
A. ABSENCE OF GENUINE INTENT TO USE:
This refers to a situation whereby the owner had no genuine intention to use the mark at the time of registration, and there was no actual use of it after it was registered for one month preceding the application for removal. As a result, if the owner had no intention to use the mark at the time of registration but later used it in relation to the registered goods, there would be no claim of non-use, and the mark cannot be removed from the register.
B. A GENUINE INTENT TO USE:
This refers to a situation wherein initially, there was a genuine intention to use the mark in relation to the registered goods or services, but a continuous period of five years and one month has elapsed without any use of the mark in relation to those goods or services. The computation of time here is essential because the applicant must demonstrate that the mark was not used for five years, counting backwards from the date of application rather than five years from the date of registration. This means that the “non-use” is computed from a month before the application to expunge the trademark is made.
Under Section 31(3) of the TMA, the trademark tribunal is allowed to refuse an application made under Section 31(1) and/or (2) if it is shown that there has been genuine use of the trade mark by any proprietor, in relation to goods of the same description as those to which the application relates, before the relevant date or during the relevant period. However, the tribunal cannot refuse the application for removal of the trademark if the applicant has been permitted under Section 13(2) of the TMA to register an identical or nearly resembling trade mark for the goods in question, or if the tribunal deems it appropriate to permit the applicant to register such a trademark.
In addition, Section 31(4) of the TMA provides specific parameters for non-use for a genuine intent to use a trademark which states that an applicant cannot rely on the non-use of a trademark if it can be demonstrated that such non-use was due to special circumstances in the trade, rather than an intention to refrain from using or abandoning the trademark in relation to the relevant goods.
Hence, the difference between both grounds lies in the first ground dating back to the time of registration, while the second ground dates back five years. In essence, the first ground consists of two concurrent elements before an order of removal can be made which are; firstly, registration with no genuine intent to use and secondly there has been no genuine use of the trademark in relation to those goods by any owner up to one month before the date of the application. The second ground has only one element: a continuous period of non-use for five years preceding a month before an application for removal is made.