Mark not used or proposed to be used, Pakistan legal perspective
Rectification of the Register can be allowed by the Registrar or the High Court in cases where the mark was not used at all or there was no bona fide intention to use it at the date of its registration. The mark in such cases will not be a trade mark within the definition of the Act. Section 37 of Trade Marks Act expressly contains a provision for the removal of such marks subject to the provisions of section 38 relating to defensive registration Fry L. J. in appollinaris Companys’ observed: “It may well be that in case of new marks the intention to use as a trade mark may be presumed; but when it is apparent, as it is here, by the evidence and admissions at the Bar, that there is no such intention, but that the registration is directed to a different end, then the entry has, within the meaning of section 90, been made without sufficient cause and ought to be expunged”.
Cases of rectification as a result of events subsequent to registration can be discussed, under the heading “entry wrongly remaining on the Register”. These cases are
(i) where the entry had been made in the Register without sufficient cause and is still remaining on the Register;
(ii) where there has been no bona fide use of the mark for a continuous period of 5 years and one month before the date of application for rectification or a longer period;
(iii) where the mark was validly registered but by reason of some circumstance arising after the date of registration has ceased to be distinctive of the goods of the registered proprietor;
(iv) where the registered mark has been abandoned;
(v) where the prescribed fee for renewal of registration has not been paid within the prescribed period;
(vi) where the mark offends against the provisions of section 8 and is likely to deceive; and
(vii) improper or invalid assignments and transmissions, etc.
The discussion already made covers the cases falling within the above categories but we may however profitably advert to and dwell a little further over two of the abovementioned categories on account of their importance, namely, removal for non‑use/abandonment and loss of distinctiveness.