Trademark Withdrawal Services – Withdraw Trademark Application

A pending trademark application can be withdrawn when the applicant does not wish to pursue the registration anymore, or the brand strategy has changed, or it wishes to file a new application after a thorough evaluation of the mark. The procedure varies depending on the current stage of the application and the reason for withdrawal.

Experts help with trademark withdrawal of the application through the review of the application and performance of proper procedural requirements. You should keep in mind that withdrawal should be distinguished from cancellation of already registered trademarks or removal of registered trademarks, as these are different processes.

Trademark withdrawal refers to the act of voluntarily stopping your application for registration before it gets registered. This means that if you withdraw trademark application, you normally stop pursuing that application with the Trade Marks Registry.

It is important to note that withdrawal is not the same as withdrawal of acceptance by the Registrar as under Section 19 of the Trade Marks Act, 1999. The Registrar has the power to withdraw the application acceptance if there is a mistake or did not meet the requirements of the law.

There could be many commercial or legal reasons to decide on cancellation of a trademark application. You may have needed to change your trademark or found that the controversial trademark is similar to your brand.

Here are some of the common reasons for cancellation of a trademark application:

• You don’t use the trademark anymore

• Your branding strategy has changed

• You plan to submit a new trademark application

• The goods and services provided under the trademark require rethinking

• You have found a close trademark

• You do not plan to pursue the registration anymore

• The previous application was done wrong

• You changed the structure or the ownership of the company

However, before actually cancel trademark application, think whether it may still have a commercial value or if any other way would be more suitable.

It is usually possible to seek withdrawal while the application is pending. So, how to withdraw trademark application in India? The exact procedure followed may vary depending upon the particular stage of the application and any steps taken by the Registry.

Once an application has been registered, the withdrawal process is no longer simple. The removal process involves different provisions and procedures.

For instance, Section 47 of the Trade Marks Act provides for the process of removal of a registered mark based on non-use, which again is subject to certain legal requirements.

If you want to withdraw a trademark application, there are some steps. First, you need to check the current status, then check the appropriate procedural process.

Step 1: Check Application Status

Before proceeding further, check the application number, applicant’s details, class, current status, and any pending proceedings.

Step 2: Review the Reason for Withdrawal

You have to decide whether you want to discontinue the application for whatever reason. Determine whether withdrawal is better than amending it

Step 3: Check Procedural Requirements

Depending upon the nature of your request, you may need to file particular forms along with required fees. Trade Marks Registry provides prescribed forms and official fee schedules for various kinds of trademark proceedings.

Step 4: Prepare the Request

You may have to prepare the necessary application/request along with relevant trademark and applicant details.

Step 5: File With the Registry

There can be request to search for relevant data shall be made via the applicable Trade Marks Registry filing mechanism

Step 6: Track the Application

After submitting the application, you have to monitor the trademark record and registry communication until withdrawal is done and reflected in the official record.

The documents required will be dependent on the type of application and the type of withdrawal request being made. The common requirements are:

• Trademark application number

• Name and address of the applicant

• Trademark details

• Class and specification info

• Authenticity documents, where needed

• Identity or business documentation, where needed

• Information about the authorized person, if necessary

• Supporting documents, if required

The requirements will vary and should be checked based on the application status instead of assuming a standard document list.

The trademark withdrawal fees vary based on the specific request made and the prescribed filing mechanism. You should not presume that a uniform government fee applies to all requests for withdrawal. The fee schedule followed at the IP India office sets different amounts depending on the type of trademark proceedings.

Withdrawal of an application does not indicate a refund of the original application fee. The provisions for refund depend upon the specific circumstances as provided for in the Trade Marks Act and the Rules.

One of these specific provisions deals with the preliminary advice given by the Registrar under section 133. If the specific conditions are met and the application is withdrawn within the time prescribed after receiving an objection from the Registrar, section 133 allows the refund of the amount that was paid at the time of filing the application.

Thus, withdrawal as such should not mean that there is a right to get the refund.

The time taken for trademark withdrawal depends on application status review, document preparation, filing the application, and registry processing.

The withdrawal decision is contingent upon the progress of your application and whether the proceedings have already begun. Whether the application is in the process of Examination, Objection, Hearing, or whatever stage, it does not automatically obligate you to stay on with the application, and the right procedure should be based on the current history of the application.

After the application process has been completed, you will no longer be able to proceed with that application. You need to keep the proof of filing together with details provided by the Registry, so you have records for the future.

In case you wish to use the same or a variant of the trademark again in the future, you may have to re-evaluate things and apply for a fresh application altogether.

No. Withdrawal refers to an application that is in the process of being filed, while cancellation or removal usually refers to an already filed registration or registration of use.

For example, the Trade Marks Rules allow rectification or removal to take place under Form TM-O in certain cases.

Likewise, a non use application trade mark can involve removal of a registration if specific statutory requirements about genuine use are met. Section 47 deals particularly with removal of the marks from the register on a non-use basis.

Yes, withdrawal of an application does not in itself prevent you from filing a new application. However, a previous assessment has to be done.

The chosen trademark needs to be checked, the classes selected, and whether there is any adverse effect. Also, fresh applications may need to be made and the relevant fee paid.

You should take care to look at withdrawal as more than just the removal of the application from the Registry.

Some frequent mistakes that are made are as follows:

• Not checking the status of the application

• Choosing the wrong process

• Giving differing applicant particulars

• Not looking at ongoing cases in court

• Thinking that the money paid to file the original application is refundable

• Mixing up withdrawal and cancellation

• Not keeping the proof of withdrawal

• Filing the new application without correctly analyzing the trademark

A status check can help avoid unneeded procedural problems.

Termination of a trademark application does not have a separate period of validity, unlike registration of a trademark. Once the application goes through the withdrawal process, it is no longer subject to the registration procedure.

If the mark has to be protected in the future, it is essential to determine whether the filing of a new application is required.

Trademark Withdrawal is not the only way out. Depending upon the nature and stage of the problem, efforts for correction or amendment of the application may be possible.

As per Rule 37 of the Trade Marks Rules, 2017, an applicant may file an application for correcting a mistake or amending an application before registration by filing Form TM-M. However, there are limitations to this rule; amendments cannot change the trademark significantly, nor can they introduce new goods or services other than what was mentioned in the original application.

Thus, you should decide whether to correct, amend, or withdraw the application.

The Brandregistration.co.in team provides services to assist with trademark withdrawal, including application assessment, documentation, filing assistance, and checking the status of the application. We also assist you in knowing the process to go after the application is made.

Our team can help you continue the discussions regarding how to change the trademark protection strategy and Trademark Registration after withdrawal.