Registration is the first step of a longer battle, not the end of one. A registered mark can be challenged, eroded, and taken — by entirely legal means. Here is how it happens.
Licensing and assignment without control
Assign or license a mark improperly and you can lose your rights.
If you license or authorise third parties to use the mark and fail to control the quality of the goods or services offered under it — a blind assignment — erosion follows naturally.
Suppose you own a clothing line and expand by licensing it to a third party, who imports cheaper clothes and applies your brand to them. Third-party use needs monitoring for proper usage and quality control. Without it, blanket assignments can, over time, erode the distinctiveness of the mark and lead to its abandonment.
There is a related risk in assigning a trademark separately from the goodwill it represents. A mark divorced from the business it identifies stops doing the work marks exist to do.
Proper control over licensed use matters for the same reason: without it, consumers are misled, and the mark ceases to indicate source or origin — its most important function.
As a precaution, annex brand usage guidelines to the agreement, clearly setting out the licensee’s rights and their limits.
Abandonment and acquiescence
Fail to use your mark for long enough and you are deemed to have abandoned it. Section 47 of the Trade Marks Act sets out grounds for removal from the register, including non-use for a continuous period of five years following registration — in practice five years and three months — which any aggrieved party may rely on.
Separately, failing to police your mark can amount to acquiescence. Where you know of an infringing use and take no action for a considerable time, that inaction may be read as consent, weakening or defeating a later claim.
The two failures compound: a proprietor who neither uses the mark nor watches the register ends up with a certificate and nothing behind it.
Genericide
“Google it.” “Take a Xerox.” Genericide is where the public comes to treat the mark as the name of a general category of goods or services rather than associating it with one owner.
Aspirin for acetylsalicylic acid, cellophane for transparent cellulose sheets, escalator and thermos have all been held generic by courts in the United States — the mark’s very success dissolving the distinctiveness it depended on.
Learn from those examples and educate the public about your brand:
- do not use the mark as a verb, and discourage others from doing so;
- avoid using it in the plural or as a common noun;
- always pair it with the generic term for the product — the brand, then what the thing is; and
- use the appropriate symbols: ® for a registered mark, ™ for an unregistered trademark, and SM for an unregistered service mark.
The point
As a trademark owner, you need to be proactive. Take proper legal action against improper use, monitor licensees, keep the mark in genuine use, and watch the register.
The certificate protects nothing on its own.
The takeaways
- Licence with quality control — and annex brand usage guidelines.
- Don’t assign the mark apart from the goodwill it represents.
- Five years and three months of non-use exposes the mark to removal under Section 47.
- Genericide kills successful marks — never let the brand become the product’s name.
Frequently asked questions
Can a registered trademark be removed for non-use? Yes — under Section 47, where the mark has not been used for a continuous period of five years and three months, an aggrieved party may apply for removal.
Does licensing put my trademark at risk? It can, if you do not control the quality of goods or services offered under the mark. Uncontrolled licensing erodes distinctiveness and can lead to loss of rights.
What is genericide? Where the public comes to treat a trademark as the general name for a category of goods rather than as an indication of one source — as happened with aspirin, cellophane and escalator.
How do I avoid genericide? Do not use the mark as a verb or in the plural, always pair it with the generic product term, use the correct symbols, and act against misuse by others.
Useful official resources
- The Trade Marks Act, 1999
- Trade Marks Registry — IP India