The Working Of Patents VS Trademarks VS Copyrights; AND The Dilemmas, As Usual!

 

My blogs explore Dilemmas in IP & Domain Name Disputes; and any Opposition is always welcomed!

Under S. 146 (2) and R. 131 (1), one needs to file the Statement of Working of a Patent, once every Three Financial Years, albeit earlier it used to be annually. Which is of course justifiable, as in case in the event of non-working of Patents, and as the Inventions are genuinely considered and made for the benefit of the society, then either the patented invention can be revoked due to its non-working, or, the process of Compulsory License can be initiated u/s 84.

The question is w.r.t. Trademarks, as, I always had this dilemma that why one needs to show the working of Trademarks, or the trademark should work, or would be liable to be removed or rectified., in case of non-working. Like, for instance in US, one needs to file MM18 Form if been processed an application via Madrid Protocol or direct. Indeed, the purpose of trademark is for trading of goods or services, and not alike Copyrights, wherein it isn’t explicitly mandatory for the work to have been put on work or been published, unless in the event of compulsory licenses, or on certain occasions, for example, if the work has been withheld from the public for a period of Six Months, or, for the benefit of the disabled, or, in case for the Academic purposes, or in case of reproduction or translation of the Work.

But why Trademarks? Further, in case of non-working for the period of 5 years, any trademark is liable to be removed/rectified. Shouldn’t there be some other mechanism to deal with this kind of scenarios? Why? Two reasons:

1.      Firstly, trademarks are not created for the benefit of the society. Rather, registered so that people can differentiate between origination of goods and services of multiple different entities, including separating well-known trademarks;

2.      Secondly, as there’s one important component that needs to be shown for the trademark to be worked viz. exhibits/invoices/advertising materials; then, there’re cases, like in case of domain names, wherein, many domain names have not been associated (let’s say in case of absolute pro-bono) under any trade or services, and there’re no exhibits nor advertising materials nor invoices to prove its use; yet, the domain names came into existence, even before any other trademarks were registered or such trademarks then been used for years, which then, files a petition of Cybersquatting, on the basis of non-use of the domain names as trademarks. Complex situation? And if any trademark has a user date, then in case of domain name disputes, any domain name can be challenged w.r.t. Cybersquatting, thus conceiving several dilemmas? Whereas, in this case, both are correct, yet, the trademark would seek under cybersquatting for the removal of any domain name, and under domain name disputes act, technically, it shouldn’t be allowed to be removed. Agreed? In this example, I’ve equated domain name == trademark; as that’s the case in case of cybersquatting, wherein one has to prove that trademark used is affected by any other domain name, thus equating the same.

Thus, what about coming out with a new theory for dealing with the non-use of the trademark or domain names. How about suspending such trademarks as in any case there’s no compulsory license is involved in Trademarks. Thus, it won’t affect, if that trademark goes into hibernation, rather been removed, of course, until and unless the RENEWAL FEES has not been paid.

Trademark is a coined word/device, registered in the capacity of an Individual or MSME or Body Incorporate. And non-use of it, shouldn’t by far affect the public at large, compared to in case of the Patents & Copyrights, as discussed above.

Just a Thought! 😊

© Pranav Chaturvedi