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February 21, 2022

Comment: Is There A Need For Post Registration Trademark Audit Programme?

Author: Intern - Ishaan K. Paranjape

India follows the First to Use principle, therefore, use of trademarks in commerce is of utmost importance. It, thus, becomes necessary to monitor the usage of trademarks. In India, there is no mechanism to audit the post-registration use, making it possible for a trademark to be registered indefinitely without being put to actual use. The author opines that there is a need to implement a post-registration trademark audit programme.

It is well-settled that the non-user of trademark does not deserve monopoly. Otherwise, this would lead to trafficking of trademarks and be prejudicial to the interests of bonafide parties. It is indisputable that several trademarks, despite attaining registration, have not been put to actual use for some or all goods/services claimed thereunder. Such registrations, in turn, become an impediment to new legitimate applications from proceeding to registration. The ostensible and non-continuous use of a trademark can have an adverse effect on bonafide users. This also creates a space for malafide actions such as trademark squatting.

In 2017, USA implemented a similar program which proved successful. Indian Trademark Office (“TMO”) is among the first in the country to implement its services over the digital space. This provides the feasibility for adoption of this program with Artificial Intelligence to monitor and track usage of trademarks post registration in a timely and organized manner.

This program would help in expediating the adjudication of the pendency of cases at the TMO, specifically rectifications filed on the ground of non-use. It should be made mandatory for the registrant to file an affidavit of commencement of use and/or continuous use within prescribed time periods and periodically, upon attaining registration. The TMO should strictly scrutinize the evidence of use especially in cases where applications proceeded to registration on a ‘proposed to be used’ basis.

Moreover, this program would also contribute to the revenue of the TMO. The TMO may issue office actions to call upon the registrant to furnish evidence of use within a stipulated timeframe. Failing which and/or in the absence of sufficient reliable evidence, the TMO may also impose fines upon the registrant for lack of bonafide use of the trademark while directing such registration be expunged from the register or imposing conditions thereof.

The author opines that this program would effectively help in cleaning out the register and maintain its sanctity. Hence, the implementation of the post-registration audit program would prove beneficial to the interests of legitimate parties and also keep up with the objective of the trademark law for the time being in force.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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