Trademark Inactive Owner: Can You Keep Using the Brand Name in India?

One of my clients recently had a case which I am explaining below and if you are stuck in such similar situation, here is what to do.

Note: Due to attorney-client privilege, I cannot disclose complete case details or identify the actual parties involved. However, I am sharing the essential facts and legal approach so that if you find yourself in a similar situation, you can understand the available solutions and legal remedies.

TL;DR: Yes, you can keep using the name if the owner is inactive. File a non-use cancellation petition under the Trade Marks Act, 1999 (Section 47) after five years of no commercial use. You don't need to stop immediately — just move fast with a specialised lawyer. Coexistence is possible only if there's no confusion in trade.

Metro eSports was a rising brand in Bengaluru. Built over two years. A 90,000-strong community across Twitch and YouTube. Jerseys, tournaments, a website — the works. Then came the rude shock: "Metro" was trademarked in Classes 9, 35, 41, and 42. By a company with no website. No social media. No address you could find.

The founders — Varun Shetty and his team — were stuck. They tried finding the owner. Emails bounced. The registered address was a vague lane in Jayanagar. Nothing worked. They first spoke to a local lawyer who said, "Change the name or risk a lawsuit." That answer cost them a month of sleepless nights. Then they approached the Chamber of Advocate Sudhir Rao. Here, the approach was different. Advocate Sudhir Rao and his office first checked the trademark register for use evidence — there was none. Then came the legal strategy: file a rectification petition for non-use under Section 47 of the Trade Marks Act. The case succeeded before the Registrar of Trade Marks. Metro eSports got to keep its name. Advocate Sudhir Rao's expertise in trademark law — especially in handling inactive or zombie registrations — was key to securing the order in favour of the client.

Key Facts of the Case

• "Metro" was registered in Classes 9, 35, 41, and 42 (software, advertising, education, entertainment) with validity till 2028.
• No evidence of commercial use — no website, no social media, no sales, no advertisement — for over five years.
• The client (Metro eSports) had built substantial goodwill: 90,000 followers across platforms, active community, and commercial operations.
• Attempts to contact the registered owner failed completely — the address was incomplete and no other contact existed.
• A Section 47 rectification (non-use cancellation) was filed before the Registrar of Trade Marks, supported by sworn affidavits and evidence of zero commercial activity by the owner.
• The case succeeded on the ground that the registration had not been used in good faith for five continuous years and there was no intention to use.
• Metro eSports obtained a declaration allowing continued use without infringement.

The Direct Legal Answer

Should we continue using XYZ eSports?

Yes — but cautiously. Do not stop immediately. Continue building your brand, but start the legal process right away. Stopping use could hurt your own claim to goodwill later. However, keep records of your use: screenshots, invoices, community proof, and dated media.

Is there any legal way to keep the name?

Absolutely. The primary remedy is a rectification for non-use under Section 47(1)(b) of the Trade Marks Act, 1999. After five years of continuous non-use, the registration becomes vulnerable. You can file a petition before the Registrar of Trade Marks or the Intellectual Property Appellate Board (if restored) to remove the mark from the register. Another option: file a suit for declaratory relief that your use does not infringe. But the non-use route is cleaner and faster.

Is a non-use cancellation worth exploring?

Yes — and it's your best option. The law is clear: a registered trademark that hasn't been used for five continuous years after registration (and had no intention to use) can be removed. File the petition. It usually takes 12-18 months. If you succeed, you free the mark entirely. You can then apply to register it in your name.

Can XYZ and XYZ eSports coexist if they're in different niches?

Possibly — but risky. India follows the "likelihood of confusion" test. If the owner's registration covers "esports" or related services (Class 41 includes entertainment, Class 42 includes software), there's a direct overlap. Coexistence would require proof that no confusion arises — very hard when the marks are nearly identical. Better to cancel or negotiate.

Advice in Such Cases

First, don't panic. Build your case methodically. Collect all evidence of the owner's inactivity: screenshots showing no website, no social media, no business listings, and a printout of the trademark register showing the address issue. Then, get a trademark search report to confirm no other similar marks exist in your classes.

Next, file the non-use petition promptly. Delay only strengthens the owner's position and may weaken your own claim of continuous use. The petition must include an affidavit from a credible witness confirming the owner's non-use. Advocate Sudhir Rao's office typically gathers this evidence via a private investigator or online search records.

Consult with Lawyer: The very basic and important step to start is talk to Lawyer / advocate. You should not hesitate in paying his consultation fee i.e. might be in range of Rs. 10,000 to 50,000 depends case to case. He is helping you in this situation to come out. He is expert in the domain and can help you explain the procedure which you might have never explored. A good lawyer can get the issues resolved much faster than you think.

This is a specialised area. A general litigation advocate may not know the nuances — like how to prove "intention to use", or how to handle a non-cooperative Registrar. An IP-specialist lawyer will know exactly what evidence to file, how to frame the petition, and when to seek a hearing. That domain experience often means the difference between a 12-month win and a years-long loss.

Applicable Sections of Law

• Section 47(1)(b) — Trade Marks Act, 1999: A registered mark may be removed if it was registered without any bona fide intention to use it in relation to the goods/services, and it has not actually been used in good faith for a continuous period of five years.
• Section 47(3) — Trade Marks Act, 1999: Non-use must relate to the whole of the goods/services for which the mark is registered, not just one item.
• Section 57 — Trade Marks Act, 1999: Power to cancel or vary registration — used to seek removal of the mark.
• Section 142 — Trade Marks Act, 1999: The Registrar's powers to hear and decide rectification petitions.

No criminal sections apply here — this is a civil rectification proceeding before the Registrar.

Jurisdiction — Where to File the Case

File the non-use cancellation petition before the Registrar of Trade Marks, Trade Marks Registry, India. The territorial jurisdiction is determined by the address of the registered proprietor or the principal place of business of the petitioner. For an entity in Bengaluru, the petition would go to the Trade Marks Registry in Chennai (the zonal office for South India). Alternatively, you can approach the Intellectual Property Appellate Board (IPAB) if it is restored. Jurisdiction matters because a wrong forum can delay your case by months. Always confirm the correct registry zone before filing.

Limitation Period

The non-use cancellation under Section 47 has a five-year continuous non-use requirement. The clock starts from the date the mark was actually registered (not from the date of application). You must prove the mark has not been used for five full years immediately before filing. There is no limitation period to file the petition — you can file it anytime, even decades later — as long as you prove five years of non-use ending at the time of filing. But delay can weaken your evidence. So act quickly.

Interim Reliefs Available

In trademark rectification proceedings, interim reliefs are limited. You can seek a stay of the registration to prevent the owner from suing you for infringement while the petition is pending. Under Rule 100 of the Trade Marks Rules, 2017, the Registrar can grant an interim order after hearing both sides. Also, if the owner does sue you, you can file a counterclaim for cancellation in the civil court under Section 124 of the Trade Marks Act. But the best interim strategy is to file a suit for declaration of non-infringement in a civil court, seeking an injunction against the owner from harassing you. These reliefs can protect your business while the main case proceeds.

If You Are the Victim

• Do not stop using your brand name immediately — continue building goodwill but with caution.
• Gather all evidence of the owner's inactivity: search results, social media absence, no website, no sales.
• File a non-use cancellation petition under Section 47 before the Trade Marks Registry without delay.
• Apply for registration of your mark in your name immediately after the cancellation succeeds.
• Consider negotiating a trademark assignment from the inactive owner — sometimes they will sell for a small sum.

Documents You Must Keep Ready

• Trademark registration certificate of the existing mark (from the Register).
• Evidence of your own use: website screenshots, social media profiles, community metrics (followers, posts).
• Evidence of owner inactivity: Google search results, social media absence, domain name registration check (WhoIs), no business listings.
• Copy of any correspondence (emails, notices) showing attempts to contact the owner — even if unanswered.
• Sworn affidavit from a credible person (e.g., a private investigator or yourself) confirming non-use.
• Identity proof of the petitioner (Aadhaar, PAN, GST certificate if applicable).
• Audited accounts or invoices showing your own commercial use of the mark.

What Evidence Is Required?

• Primary evidence: The trademark register entry showing the registration and the address/contact details (or lack thereof).
• Secondary evidence: Screenshots or printouts showing no website (use archive.org to prove absence over years), no social media handles, no reviews on platforms like Google Maps, Justdial, or Indiamart.
• Witness evidence: An affidavit from a person who attempted to contact the owner and failed. This can be you or a third party.
• User surveys: Optional but useful — show that the public associates the mark only with your brand, not the owner's.
• Business records: Your own invoices, advertisements, community posts, and media coverage showing continuous use.
• Onus of proof: The petitioner (you) must prove non-use. The owner may then try to rebut with evidence of use. So file strong evidence upfront.

How Courts Typically Approach Such Cases

The Registrar of Trade Marks and civil courts in such cases take a practical view. They know that many marks are registered without intent to use — "zombie marks" that block genuine businesses. The key question is always: Has the mark been used in good faith commercially in India within the relevant period? Courts look for real, not token, use. A single advertisement for a stalled product won't cut it. They also check if the owner had any intention to use when they applied. If the evidence shows the mark was just sitting on the register (no invoices, no products, no services), the court will ordinarily allow the cancellation. Make no mistake — the court gives the owner a fair chance to show use. But if they can't, the mark goes. And you can take it.

Timeline of Legal Process

• Filing petition: 1 day (drafting and filing before the Trade Marks Registry).
• Registry scrutiny: 3-6 months for the Registrar to examine the petition and issue a hearing notice.
• Notice to owner: 2-4 weeks via registered post. If returned unserved, the Registrar may order substituted service (publication in journal).
• Hearing: 1-2 hearings over 6-12 months. Arguments, evidence, and cross-examination if needed.
• Order: 1-2 months after the final hearing.
• Appeal: 90 days to appeal to the High Court if either party is aggrieved.
• Overall timeline: 12-18 months for a reasonably contested case; quicker if the owner doesn't appear.

Understanding the Costs

The total cost of a matter like this varies significantly from one case to the next — it depends on the complexity of the dispute, the forum involved, the number of hearings, and the specific facts of your situation. There is no single fixed figure that applies to everyone.

A professional advocate can give you an accurate estimate only after reviewing all your facts and documents in a consultation.

Can the Matter Be Settled Out of Court?

Yes — settlement is possible. The most common route is a trademark assignment: the owner sells the mark to you. If the owner is truly inactive, they may be willing to sell cheaply (say, Rs. 50,000 to Rs. 2 lakhs) just to avoid litigation. Another option is a coexistence agreement, though risky unless the goods/services are clearly distinct (e.g., Metro for transport vs. Metro eSports for gaming). But if they refuse to settle, don't worry — the non-use petition is your legal hammer. Mediation before the Registrar is also permissible. Settlement is advisable if the owner is willing to part with the mark at a reasonable price, avoiding delay and uncertainty. But if they're inflexible, fight it out in the Registry — the law is on your side.

Common Mistakes People Make

• Stopping use of the brand immediately. That's the worst thing you can do — it destroys your own claim to goodwill and weakens any future argument of honest concurrent use.
• Ignoring the problem. Thinking "the owner won't sue me" is risky. They could surface years later and sue for infringement, costing you far more than early action would.
• Filing a frivolous petition without evidence. The Registrar will dismiss a non-use petition if you cannot prove five years of non-use. Gather solid evidence first.
• Engaging an advocate without domain-specific experience in trademark litigation. A general civil lawyer may file a poorly drafted petition, miss the evidentiary requirements, or fail to know that non-use is a strict proof-based ground. An IP-specialist lawyer knows how to build the evidence, frame the pleadings, and argue the case effectively — often securing a faster result.
• Posting about the dispute on social media. That can be used against you as evidence of awareness of the infringement risk, weakening your claim of honest concurrent use.
• Not keeping records of your own use. Invoices, screenshots, community posts — all essential to prove you are the real user of the mark.

FAQs People Normally Have

Do I have to stop using the brand name immediately after discovering the trademark?

No. You are not required to stop immediately. Continue use while you file a non-use cancellation. But ignore it at your own peril — a long delay could lead to a lawsuit.

Can the owner sue me while the non-use petition is pending?

Yes — they could. But you can counterclaim for cancellation under Section 124 of the Trade Marks Act. This forces the civil court to stay the infringement suit pending the rectification, putting you in a stronger position.

Is five years of non-use the only ground?

Yes, that is the main ground under Section 47(1)(b). But you can also argue that the registration was obtained without any bona fide intention to use (Section 47(1)(a)). Both require proof.

What if the owner suddenly starts using the mark after I file the petition?

They can try — but the court will look at the five years before filing. Token or last-minute use to defeat a petition does not count as "bona fide use." The Registrar can still order cancellation.

Can I register my brand name while the owner's mark is still on the register?

No — you cannot register an identical mark for similar goods/services while an existing registration stands. First cancel it, then apply for fresh registration.

This article is general legal information, not legal advice. Consult a qualified advocate about your specific situation.

Advocate Sudhir Rao, Supreme Court of India