Section 47 of Trademark Act helps remove registered trademarks that owners don’t use in business. Section 47 ensures trademark rights depend on active use and not just registration. It allows people harmed by unused trademarks to challenge them, promoting fair competition and clearing inactive marks from the register. Found in Chapter VI of the Act, this section balances the rights of trademark owners with those of new businesses entering the market. This article explains Section 47 clearly, covering its grounds, procedures, defenses and effects.
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What is Section 47 of Trademark Act?
Section 47 of Trademark Act is called "Removal from register and imposition of limitations on ground of non-use". It lets the Registrar or High Court (after the Intellectual Property Appellate Board (IPAB)ended in 2021) remove a trademark or limit its scope if it’s not used. It stresses that trademarks must be actively used in business to stay protected.
Section 47 focuses on two main reasons for removal: no intent to use the trademark and long periods of non-use. It applies to trademarks registered for specific goods or services.
Any "person aggrieved" someone whose business is hurt by the trademark’s registration can file for removal. The section includes protections, like exceptions for special circumstances, to ensure removals are fair.
This overview introduces how Section 47 keeps the trademark system active and fair by removing unused marks.
Grounds for Removal under Section 47
Section 47 of Trademark Act lists clear reasons a trademark can be removed and all are centered on non-use. These rules ensure only actively used trademarks stay protected.
No Genuine Intent to Use
Under subsection (1)(a) of Trademark Act, a trademark can be removed if the owner registered it without a real plan to use it for the listed goods or services and that no use has happened up to three months before the removal request. This targets "defensive registrations" where owners register marks in many categories without planning to use them, potentially blocking others unfairly.
For example, if a mark is registered in 40 categories but used in only two, this part of Section 47 can challenge the unused categories. The person requesting removal must show proof, like no marketing or sales records, to prove the owner’s lack of intent.
Long Period of Non-Use
Subsection (1)(b) allows removal if the trademark has not been used genuinely for five continuous years from its registration date, up to three months before the removal request. This five-year rule acts as a "use it or lose it" policy to stop trademark squatting.
Genuine use means real business activities, like selling products, advertising, or exporting, not just small efforts to keep the mark. If the trademark stays unused for this period without a good reason, it can be removed under Section 47.
Limiting the Trademark
Subsection (2) lets the tribunal limit a trademark’s scope, like restricting it to certain regions or markets, if non-use is proven in those areas. This allows others to register similar marks under Section 12, making sure that trademarks reflect actual business use and not broad protections.
Exceptions and Defenses in Section 47
Section 47 of Trademark Act allows removals but protects owners from unfair cancellations. Subsection (3) says non-use caused by "special circumstances in the trade" like legal restrictions, import bans, or regulatory issues not due to the owner’s plan to abandon the mark, doesn’t count toward the non-use period.
Owners can defend their trademark by showing use in related goods or services or plans to assign the mark to a registered user or new company. They can also prove global use or steps toward starting business activities, which shifts the burden back to the person requesting removal.
Read about What is a Trade Secret?
Procedure for Applying under Section 47
To file under Section 47 of Trademark Act, follow the Trade Marks Rules, 2017. An aggrieved person submits Form TM-O to the Registrar with a statement explaining the case, facts and what they want. The fee is ₹3,000 for paper filing or ₹2,700 for e-filing.
The trademark owner must respond with a counter-statement within two months. If they don’t, the applicant can proceed with evidence. Third parties can join by filing Form TM-O. Decisions can be appealed to the High Court. Since 2021, High Courts handle these cases, ensuring a fair process.
Evidence is key. The applicant must first prove they’re harmed and the trademark isn’t used. Then, the owner must show proof of use to keep the mark.
How Section 47 Works with Other Sections
Section 47 of Trademark Act connects with other parts of the Trademark Act like Sections 57 (fixing the register) and 124 (pausing infringement lawsuits). Section 57 allows changes to the register, often used with Section 47 for bigger challenges. Section 124 says that in infringement cases, if someone claims a trademark is invalid under Section 47, the court must define the issues before fixing the register, avoiding overlapping legal battles.
Also, Get to Know About Infringement of Geographical Indication.
Landmark Judgements on Section 47 of Trademark Act
Section 47 of Trademark Act allows trademark removal for non-use, ensuring marks are used in business. Below are four key court cases explaining how this section works, with facts, issues and decisions.
1. Hardie Trading Ltd. and Anr. vs. Addison’s Paint and Chemicals Ltd. (2003)
Facts: The trademark "Spartan" was registered by James Hardie and Co. for paints and lacquers. Addison’s Paint and Chemicals Ltd. asked to remove it under Section 47, claiming no use for over five years. The company said import restrictions stopped use. The case reached the Supreme Court after lower courts disagreed.
Issues: Should the trademark be removed for non-use under Section 47? Do import restrictions count as special circumstances? Who has the burden of proof?
Decision: The Supreme Court kept the trademark, ruling that import restrictions were special circumstances under Section 47(3), not due to the owner’s intent to abandon the mark. The court set a three-part test: an aggrieved person must apply, prove five years and three months of non-use and show no special circumstances. The applicant proves non-use first, then the owner justifies it.
2. Pfizer Products Inc. vs. Rajesh Chopra (2007)
Facts: Pfizer owned the trademark "Geodon" for a drug which was registered on July 18, 1996. Rajesh Chopra asked to remove it under Section 47 for non-use in India. Pfizer showed evidence of use in 40 countries, including sales and ads, though not much in India.
Issues: Should the trademark be removed for non-use under Section 47? Does global use count as genuine intent and use?
Decision: The Delhi High Court rejected the removal, saying global use and advertising counted as genuine use under Section 47, even with limited use in India. The court noted that worldwide reputation and spillover effects protected the mark, as Pfizer showed real business intent globally.
3. Patel Field Marshal Agencies v. P.M. Diesels Ltd. (2017)
Facts: P.M. Diesels Ltd. owned "Field Marshal" trademarks for diesel engines. Patel Field Marshal Agencies filed an infringement lawsuit but didn’t initially challenge the trademark’s validity. Later, they sought removal under Sections 47 and 57 for non-use. The case reached the Supreme Court after conflicting lower court rulings.
Issues: Can removal under Section 47 proceed separately if invalidity wasn’t raised in an infringement lawsuit? Does failing to pursue invalidity block later removal?
Decision: The Supreme Court ruled that Section 47 removal is limited by Section 124 in ongoing infringement cases. If invalidity is raised but not pursued, the party can’t seek removal later under Section 124(3). Civil courts cannot decide trademark validity. Only the Registrar or High Court can decide trademark validity, affecting the lawsuit. This decision prevented jumping between courts for non-use claims.
4. Crocs Inc. vs. Registrar of Trademarks (2024)
Facts: Crocs Inc. asked to remove the trademark "CROCKSCLUB" in Class 25 under Sections 47 and 57, as it was registered by an unresponsive party. Crocs showed evidence of their "CROCS" trademarks, including sales, online presence and use of "CROCS CLUB" on social media since 2007. The respondent didn’t reply despite being notified.
Issues: Should CROCKSCLUB be removed under Section 47 for non-use over five years, no genuine intent and similarity to CROCS that could cause confusion?
Decision: The Delhi High Court approved the removal of "CROCKSCLUB" under Section 47. The respondent’s non-use and lack of response, combined with Crocs’ evidence of goodwill, justified cancellation due to possible confusion. The court ordered the Registrar to remove the mark within six weeks, stressing active use for registration.
Summary
Section 47 of Trademark Act encourages active use of trademarks while preventing inactivity. By allowing removal of unused marks, it supports fair competition in business. Lawyers must understand its grounds, procedures and defenses, using court cases to argue effectively. As trademark disputes grow, knowing Section 47 is key to protecting intellectual property in a changing market.
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Section 47 of Trademark Act: FAQs
Q1. What is the difference between Section 47 and 57 of the Trademark Act?
Section 47 removes trademarks for non-use, while Section 57 fixes or cancels registrations for errors, fraud, or public interest.
Q2. What are the 4 types of trademarks?
The four types are product marks, service marks, collective marks and certification marks.
Q3. What is Section 57 of the Trademark Act?
Section 57 lets the Registrar or High Court fix or cancel a trademark registration for errors, fraud, or public interest.
Q4. What is the rule 48 of the Trademark Act?
Rule 48 of the Trade Marks Rules, 2017, requires the Registrar to notify registered users or licensees about a trademark removal application.
Q5. What is Section 55 of the Trademarks Act?
Section 55 covers how a registered trademark can be used by a registered user or licensee under agreed terms.
