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When you file a trademark application for registration, it has to knock down several stages before it is finally registered. Scrutinizing your trademark application is one of them wherein your application is checked by the registrar/examiner. If the examiner finds that your trademark is not distinctive or similar to some existing trademark, then he seeks some clarification or raises some queries from the applicant.
These queries or clarifications are raised in the form of objections as to the acceptance of application for registration. But if you delay in filing the renewal, then the status of your trademark will be shown as abandoned. In this blog post, we will explain what an abandoned trademark is, and the reason why trademarks get abandoned.
Abandoned trademark meaning is, a trademark that is no longer in use or recognized by a national or regional trademark registry office is known as an abandoned or dead trademark.
A trademark can be abandoned for a number of reasons including:
For a long time, if the trademark has not been in use, then it is abandoned. However, the trademark may not be deemed abandoned if the owner intends to restart using it.
If the owner has voluntarily given up their trademark rights by announcing in public that they are terminating a good or service.
Following its expiration, if the trademark is not renewed then it gets abandoned.
If cancellation procedures have been started by a third party.
If the owner has not shown up for a hearing session or replied to a report.
The owner has given the trademark rights to a third party without any conditions.
Without conducting adequate quality control, the owner has permitted others to use the trademark.
Here are some popular examples of trademark abandoned in USA and India:
Coca Cola failed to renew the trademark in the USA for their bottle design in the year 1985. However, under the trademark law, it was possible for the beverage company to have some protection. This was possible since the bottle design was still being used by them.
In the 2000 case of Om Prakash Gupta v. Parveen Kumar & Anr, the court determined that the plaintiff Om Prakash Gupta had given up the trademark "SURAJ CHHAP" and lost the right of prior user. The plaintiff asserted that he was the registered owner of the "Suraj Chhap" trademark, which he used in 1973, 1978, and 1999. However, a disclaimer on the word "Suraj" and the "Sun" device applied to the plaintiff's registration.
The plaintiff, according to the defendants, had misrepresented the trademark's registration. The court revoked an interim injunction issued in 1999 and dismissed the plaintiff's lawsuit. The court determined that the plaintiff had concealed and falsified important papers, and that the defendant was the prior user and adopter of the trademark.
The iconic check pattern of the luxury British fashion brand Burberry was introduced in 1904 and is recognized at a global scale till date. In 2006, the brand failed to obtain trademark renewal for their check pattern in the USA. However, through subsequent registrations, they were able to restore their trademark rights.
In India, a trademark can be re-registered if it has been abandoned due to non-renewal. For this, the applicant must file an application for restoration within one year and after six months of the abandonment. For the application, form TM-R must be used and the prescribed fee must be paid along with it. The applicant must provide a statement wherein he explains why the trademark wasn’t renewed in a timely manner.
If the re-registration application of the abandoned trademark gets approval, then the trademark will be registered for 10 years.
Sometimes, it is possible to claim an abandoned trademark in India. To do this, here’s what needs to be done:
Make sure the trademark isn’t being used by anyone else in India. For this, using a trademark search tool can be helpful.
A new application must be filed in Form TM-1. In the application, all the necessary details about the trademark must be provided correctly.
If the trademark has been deleted from the trademarks register, an application must be filed for restoring it by filing Form TM-13. Along with it, the prescribed fees must be paid.
Within one month of the abandoned status, a petition must be applied to the Trademarks Registrar. The registrar can restore the trademark if they are satisfied with the reason for delay.
If the trademark has been abandoned for over six months, a new application must be filed.
If you can prove that an extraordinary situation prevented you from petition filing for revival within six months, you can file a ‘Petition to Director’ form.
Trademarks must be renewed in a timely manner. Failing to file an application for trademark restoration for an extended period can result in abandonment of your trademark. Once the trademark gets abandoned, it can be used by others. If you need assistance in trademark renewal, connect with our trademark consultants at Registrationwala! Don’t let someone else benefit from your brand’s identity!
Q1. Is a dead trademark same as an abandoned trademark?
A. Yes, a dead trademark is the same as an abandoned trademark.
Q2. Can you claim someone else’s abandoned/dead trademark?
A. The answer is yes and no, depending on each individual case. Sometimes, it is possible to claim an abandoned or dead trademark of someone else. However, it can be a difficult and expensive procedure. In some cases, the original owner may still have common law rights to the trademark if they are still using it to offer goods and services. Therefore, it is advised to consult with a trademark professional.
Q3. What is the due date for re-registering an abandoned trademark?
A. You can restore an abandoned trademark within one year and after six months of its abandonment by filing an application using TM-R form for trademark restoration.
Q.4 What happens when a Trademark is Abandoned?
Once a trademark has been abandoned, the abandoned trademark’s owner cannot claim any rights to it any longer. Hence, anyone else can use the trademark.
Hey there, I'm Dushyant Sharma. With the extensive knowledge I've gained in past 8 years, I have been creating content on various subjects such as banking, insurance, telecom, and all the important registration and licensing processes for various companies. I'm here to help everyone with my expertise in these areas through my articles.
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