INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
Revocation/Cancellation Proceeding Any aggrieved person may make an application before the TMO or the Intellectual Property Divi - sion for removal of a registered trade mark or for cancelling the registration of the trade mark and for rectification of the register, as such. Persons aggrieved are generally persons who are in some way or another substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained on the register, perhaps as it would affect their own rights in a trade mark or any like reason. Hence, in a revocation/cancel - lation petition, the person aggrieved needs to file a statement of case establishing the reason behind the petition. 5.4 Opposition or Revocation/ Cancellation Procedure Opposition Procedure Once a notice of opposition is filed, the proce - dure is as follows: • the TMO will serve a copy of the notice of opposition to the applicant; • following the service of the notice of opposi - tion, the applicant is given two months to file a counterstatement outlining its position in order to overcome the grounds of opposition; • the applicant’s trade mark is deemed aban - doned for non-prosecution if it fails to file a counterstatement within two months of receiving the opposition; • alternatively, after filing of the counterstate - ment, the opposition will proceed to the evidence stage; and • upon completion of the evidence stage, a hearing notice date is generated and, after hearing the parties and considering the evidence, the TMO then gives its verdict on
whether the trade mark is accepted for regis - tration or refused. Revocation/cancellation procedure: An applica - tion for revocation/cancellation of a registered trade mark can be filed before the TMO or the Intellectual Property Division in the prescribed manner and with the requisite fee. 5.5 Legal Remedies Against the Decision of the Trade Mark Office If either of the parties is not satisfied with the TMO’s decision in opposition proceedings, then the decision can be challenged by filing an appeal before the Intellectual Property Division. 5.6 Amendment in Revocation/ Cancellation Proceedings There is no explicit provision for amendment given in revocation/cancellation proceedings. However, in case of a partial revocation/cancel - lation petition – as explained in 5.4 Opposition or Revocation/Cancellation – amendment to limit the specification could be directed. 5.7 Combining Revocation/Cancellation and Infringement Under Section 124 of the Trade Marks Act 1999, the defendant in an infringement suit can seek a stay of the infringement proceedings. In order to obtain a stay, the defendant must contest the registration of the mark that is the subject of infringement proceedings. 5.8 Measures to Address Fraud If any trade mark is registered without any suf - ficient cause (ie, if registration was obtained by fraud or misrepresentation of facts or the mark registered is similar to an already registered trade mark), then cancellation proceedings can be initiated for the impugned mark under Sec - tion 57 of the Trade Marks Act 1999.
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