Trademark Abandonment: What is it all about?

Introduction

The value and identity of every business lies in its brand. But imagine watching your name slip away even without trying, simply because you stopped using it. That is known as trademark abandonment, where a brand owner loses their rights, intentionally or otherwise. 

For brand owners, it is important to understand abandonment, whether you are managing a legacy brand, launching a new one, or keeping an eye on the competition. 

What is Trademark Abandonment?

Essentially, trademark abandonment happens when a brand owner stops using their mark and has no intention to  resume its use. After a prolonged period of non-use, the mark may lose legal protection and exclusivity.

The doctrine of trademark abandonment works in two ways:

Abandonment Due to Non-Use

If a trademark is not used for a certain time period, generally five years in India, the law presumes that the owner of the mark intended to abandon it. This means that a challenger need not independently prove intention, as prolonged non-use itself can constitute strong evidence. Once this presumption is made, it is up to the trademark owner to show that they are still using the mark or planning on reusing it soon.

Abandonment due to Neglect or Non-Response

In India, before a trademark is officially registered, it must clear certain stages such as responding to objections, or filing counter-statements when their mark is opposed. However, if an applicant fails to respond to examination reports or opposition proceedings within prescribed timelines, the application may be treated as abandoned. Section 132 of the Trade Marks Act, 1999 governs abandonment but to ensure fairness, allows time to issue notice to the mark owner and an opportunity to respond to any objections. This ensures proper procedures are followed and there is no unnecessary abandonment of trademarks.

Why does Abandonment matter to businesses?

Understanding the principle of abandonment is important for business owners because once a mark is considered as abandoned, the owner loses all exclusive rights associated with it. Competitors or other parties can use the same or similar mark without any potential infringement. This means that if your trademark is abandoned, others can claim it as their own and potentially even register it. In that case, recovering the brand or fighting infringement cases becomes both expensive as well as uncertain. 

Similarly, any kind of administrative mishaps can also destroy brands. In India, there have been cases where the Trademark Registry automatically marked trademark applications as abandoned without sending notices to the applicants. This was considered to be erroneous on part of the Registry for skipping this procedure merely because the applicants did not respond to the examination reports. 

How do Courts Decide Abandonment?

When judging whether a mark has been abandoned, courts consider several key factors:

1. Actual Non- Use: Has the mark been used in the market? If the trademark owner is not able to prove five years of the mark being used in the market, Courts generally assume that the trademark has been abandoned.
2. Intention Not to Use: Did the owner give signs that they had quit using the mark? If the trademark owner is silent, there is a lack of use of the mark in the marketplace, and the owner has not taken steps to resume using the mark, it generally points to abandonment.
3. Evidence of Active Use: However, if the trademark owner resumes using the mark before any third-party or competitor challenges it, that counters the abandonment claim.

What should Business Owners do to prevent Abandonment?

1. Use Your Trademark Consistently: Use the mark consistently on products, materials, advertisements, etc. Regular use of the mark prevents any claim of abandonment.
2. Track Legal Deadlines Proactively: Keep track of examination reports, opposition notices, or calls to file replies. Ensure that your contact information provided to the Registry is current and accurate in order to receive any notices or oppositions.
3. Show Resumption Plans If You Pause: In case you cannot use your mark on products or advertisements, document all internal plans to re-launch. That provides evidence that there was no intention to abandon the mark. 
4. Monitor Your Marks: Proactively monitor competitor filings, official notices, and any registry updates. 
5. Be Mindful During Litigation or Licensing: Even if your mark is not being used actively, continuing to maintain and assert ownership through licensing agreements to preserve your rights as an owner. But also ensure that the licensing is being monitored and there is no degradation in quality as that can weaken your ownership over the mark.

Conclusion

Trademark abandonment is a real risk for any business that neglects its brand. Whether it is not using the mark, missing a procedural deadline, or failing to monitor potential dilution, brands can lose their significance, even unintentionally. 

For brand owners, the key takeaway is simple:

• Use your mark meaningfully
• Proactively monitor and respond to registry notices
• Prove that you keep intending to use the mark