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Understanding the trademark withdrawal process in India is important for businesses streamlining their portfolios. We're here to guide you through these legal steps, helping you make informed and strategic decisions.
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Trademarks are important for protecting a brand's identity, but there may come a time when a business needs to withdraw a trademark.
This could be due to various reasons, such as a change in business strategy, rebranding, or the discontinuation of a product or service.
In India, the process of trademark withdrawal is governed by specific rules and regulations. Understanding these steps is essential to ensuring that the withdrawal is conducted smoothly and legally.
This blog will guide you through the Trademark Withdrawal Process in India and provide insights into the key steps involved.
Trademark Withdrawal in Definition
Trademark withdrawal refers to the process of legally removing a registered trademark from the official records of the trademark registry. This process is different from trademark abandonment, which occurs when a trademark is not renewed or is not actively used in commerce.
Key Steps You Can’t Miss in the Trademark Withdrawal Process in India
To effectively withdraw a trademark in India, several steps need to be followed. Below are the key steps in detail:
Step 1: Identify the Reason for Withdrawal
Before initiating the trademark withdrawal process, it is essential to identify the reason for the withdrawal. Common reasons include:
- Rebranding or changing the business name.
- Discontinuation of a product or service associated with the trademark.
- Avoiding legal disputes or conflicts with similar trademarks.
- Receiving an infringement notice.
- Simplifying the trademark portfolio by removing unnecessary trademarks.
Understanding the reason will help in determining the appropriate withdrawal process and whether it is the best course of action.
Step 2: Conduct a Trademark Search
Even though you are withdrawing the trademark, conducting a thorough trademark search is important. This helps ensure that there are no pending legal disputes or obligations associated with the trademark. A trademark search can be conducted through the official website of the Indian Trademark Office or by hiring a professional trademark attorney.
Step 3: Determine the Status of the Trademark Application
The process for withdrawing a trademark application in India varies depending on the status of the application. There are three primary scenarios:
Case I: Where the Mark is Not Opposed
If the trademark application is not opposed, the applicant or their agent must draft a withdrawal letter with the basic details of the application, such as the application number, class, and goods or services description.
The letter needs to specify the withdrawal's cause in detail. The signed copy of the withdrawal letter, along with a power of attorney (if the application was filed by an agent), needs to be uploaded under “New Form Filing < Miscellaneous Reply < Letter of Withdrawal (MIS-W) < Type Application No.”
The application is then submitted after digital signing. Typically, withdrawal applications filed under the “Miscellaneous Reply” tab are approved within 1-2 weeks.
Case II: Where the Mark is Opposed
If the trademark is opposed, the withdrawal letter can only be submitted via Form TM-M after the payment of fees under the “Correction of clerical error or for amendment u/s 37” section.
Alternatively, if no response is made to the opposition, the trademark will automatically be abandoned within 2-3 years and will be treated as withdrawn. Applications submitted under Form TM-M may take up to 6 months for approval.
Case III: Where the Mark is Registered
For registered trademarks, there is no formal withdrawal process. Instead, the applicant can choose not to renew the trademark. This will lead to the trademark being automatically abandoned after a certain period, effectively treating it as withdrawn.
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Step 4: Submit the Application to the Trademark Registrar
Once you have determined the status of your trademark application and prepared the necessary documents, submit the application to the Trademark Registrar. Ensure that all required documents are attached to avoid any rejection or delays.
Step 5: Pay the Necessary Fees
Depending on the type of withdrawal (whether the trademark is opposed or not), different fees apply:
- No Fee for submissions under the “Miscellaneous Reply” tab.
- ₹900 Fee for submissions under Form TM-M.
Check the official website of the Indian Trademark Office here for the most up-to-date fee structure.
Step 6: Acknowledgment of Receipt
After submitting the application and paying the necessary fees, the Trademark Registrar will acknowledge the receipt of the withdrawal application. This acknowledgement serves as proof that the application has been received and is under process.
Step 7: Examination by the Trademark Office
The Trademark Office will examine the withdrawal application to ensure all requirements are met. The examination process includes verifying the details provided in the application and ensuring no pending issues or legal disputes are associated with the trademark.
Step 8: Publication in the Trademark Journal
Once the examination is complete and there are no objections, the withdrawal of the trademark will be published in the Trademark Journal. This publication serves as a public notice that the trademark has been withdrawn and is no longer protected under the Trademark Act of India.
Step 9: Obtain the Withdrawal Certificate
The final step in the Trademark Withdrawal Process in India is obtaining the withdrawal certificate. The Trademark Registrar issues this certificate as official confirmation that the trademark has been successfully withdrawn. It is essential to keep this certificate for your records as proof of the withdrawal.
What Else Need to be Take Care in Trademark Withdrawal
Legal Implications
Withdrawing a trademark can have legal implications, especially if there are ongoing disputes or if the trademark is involved in licensing agreements. It is important to consult with a legal professional to understand the full scope of these implications before proceeding with the withdrawal.
Impact on Brand Identity
A trademark is a significant part of a brand's identity. Withdrawing a trademark could impact brand recognition and customer trust. It is essential to consider these factors when deciding to withdraw a trademark.
Timelines and Delays
The trademark withdrawal process can take several months, depending on the complexity of the case and the workload of the Trademark Office. Being aware of potential delays can help in planning the withdrawal process more effectively.
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Why Should You Consult a Professional?
Withdrawing a trademark in India involves several steps and requires careful consideration of various legal and business factors. Following the Trademark Withdrawal Process in India ensures that the withdrawal is conducted smoothly and in compliance with legal requirements.
Always seek professional legal advice to navigate the complexities of trademark withdrawal and to protect your brand's interests.
For more detailed information, you can refer to the official guidelines provided by the Indian Trademark Office.
By understanding and following these key steps, businesses can effectively manage their trademark portfolios and make informed decisions about withdrawing trademarks when necessary.
FAQs on Trademark Withdrawal in India
What Happens After a Trademark is Withdrawn?
Once a trademark is withdrawn, it is no longer protected under trademark law. This means that the trademark cannot be legally enforced against unauthorized use by third parties. The brand associated with the trademark must cease using it to avoid any legal complications.
Can a Withdrawn Trademark be Re-Registered?
Yes, a withdrawn trademark can be re-registered, but the process involves filing a new trademark application and going through the registration process again. It is important to note that the withdrawn trademark may no longer be available for registration if another party has registered a similar trademark.
Are There Any Fees Associated with Trademark Withdrawal?
Yes, there are fees associated with the trademark withdrawal process. The fees vary depending on the circumstances of the withdrawal. It is advisable to check the official website of the Indian Trademark Office for the most accurate and up-to-date fee information.
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