A Registered Trademark is Liable to be Taken Off the Register if Not Used for Over Five Years: Delhi High Court

In a significant ruling, the Delhi High Court has highlighted the imperative of bona fide use in trademark law. The Court’s decision was based on Section 47 of the Trade Marks Act, 1999, which mandates the removal of a trademark from the register if it is not used for a continuous period of five years and three months.

The case involved the petitioner, A.K. Al Muhaidib and Sons, seeking the cancellation of the “AL-WALIMAH” trademark, registered by respondent Chaman Lal Sachdeva, on grounds of non-use. The petitioner, who also used the “AL-WALIMAH” mark since 1980 and had subsequently registered related trademarks, claimed that the respondent had not used the mark since its registration in 1990.

Justice Anish Dayal scrutinized the application of Section 47 of the Act, stating, “A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered… on the ground either—that the trade mark was registered without any bona fide intention… and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application.” The Court relied upon evidence, including an investigation report and market surveys, which indicated the non-use of the “AL-WALIMAH” mark by the respondent.

Referring to Supreme Court precedents, the judgment underscored the criteria for determining a “person aggrieved” and established the necessity of demonstrating non-use for the removal of a trademark. The Court found the respondent’s lack of response and absence of evidence of use as sufficient grounds for removal.

The Court ordered the removal of the “AL-WALIMAH” trademark from the Trade Marks Register. Justice Dayal directed, “It is directed that the impugned mark under trademark no. 523217 dated 22^nd January, 1990 for the mark ‘AL-WALIMAH’ in Class 30 be removed from the Register of Trade Marks, and the website of respondent no. 2, Registrar of Trade Marks, be updated accordingly.”

Date of Decision: February 15, 2024

A.K. Al Muhaidib and Sons vs. Chaman Lal Sachdeva and Anr.