Trademark Rectification in India

Have you ever thought about the importance of trademarks for businesses? Trademarks are one of the most valuable assets for any organization. It protects the brand, its reputation, and helps customers to identify the source of goods or services. In India, the Trademarks Act, 1999 governs the registration and protection of trademarks. But what if there is a mistake or an error in the trademark application? Don’t worry – you can rectify it. Trademark rectification is the process of correcting or erasing any error or omission in a registered trademark. In this blog post, we will discuss everything you need to know about trademark rectification in India.

1. Trademark Rectification in India

Trademark Rectification or trademark cancellation refers to the process through which a person applies for the removal of a registered trademark from the Register of Trademarks. This legal procedure corrects any mistake or error made in the details of a trademark after registration or proposes an alteration in the trademark application or after receiving the certificate of registration. In India, an application for trademark rectification can be filed on various grounds provided by the Indian Trade Marks Act of 1999, including contravention or failure to observe a condition entered in the Register, absence or omission of an entry, and incorrectly registered marks. The right to file an application for rectification is a statutory right granted to an aggrieved party affected by such an entry. Section 57 of the Act provides for the grounds for Rectification of the Register.

The next topic will discuss who can file for Trademark Rectification and the conditions to do so. 

2. Who can file for Trademark Rectification?

After understanding the grounds for filing a Trademark Rectification application, the next question arises – who can file for it? Any person who has a direct interest in the trademark can file for rectification. This includes the following:

1. Registered trademark owner: If the trademark owner notices any errors or inaccuracies in the trademark registration, they can apply for rectification.

2. Licensees: If the trademark is licenced to another person or company, then they too can apply for rectification if they notice any errors in the registration.

3. Third-party applicants: Any third-party applicant who is seeking registration or opposition of a trademark can apply for rectification of the same.

It is important to note that the application for rectification can only be filed in the specific Trademark Registry in which the original registration was filed. In addition to that, it is crucial to have a clear understanding of the grounds for filing the application to ensure that the rectification process is successful.

As we move forward, the next blog section will cover the grounds for filing a trademark rectification application.

3. Grounds for filing Trademark Rectification application

The grounds for filing a trademark rectification application in India are multiple and varied. As per the Trade Marks Act 1999 and its provisions, an aggrieved party can apply for trademark rectification or cancellation if there has been a contravention or failure to observe a condition of the registered trademark or an error in registering the trademark. Section 57 of the Act provides for the specific grounds for the rectification of the register. One such ground is non-use of the trademark for a prescribed period of time after its registration. Additionally, an entry made in the Register without sufficient cause or absent an entry such as a disclaimer or limitation on the registered mark can be rectified. The entered mark may also be wrongly remaining on the Register or could be in contravention of certain provisions of the Act, such as Sections 9 and 11. It is important to note that the right to file an application for rectification is a statutory right conferred upon an aggrieved party. 

4. Where to file for Trademark Rectification?

After understanding the common reasons for filing a trademark rectification application in India, the question arises: where to file for it? As per the Indian Trademark Act, an application for trademark rectification or cancellation can be filed with the Trademark Registry where the original trademark application was filed for registration. This includes the Trademark Registries in Mumbai, Chennai, Kolkata, Delhi, and Ahmedabad. The application must be filed in the prescribed form, including a statement of case and the requisite fee. Once the application is received, the Registrar will serve a notice to the registered proprietor to file a counter statement. If necessary, evidence may be submitted in the form of an affidavit, and there will be a hearing before the final order is passed. It’s important to note that to prevent the rectification or removal of a registered trademark, the proprietor must take proper precautions to maintain the distinctive character of the mark and use it regularly. Seeking specialist advice is recommended for the best possible outcome in trademark rectification proceedings. 

5. Procedure for Trademark Rectification in India

After the grounds and reasons for filing a Trademark Rectification application in India, one must know the procedure for the same. As per the Trade Marks Act 1999, an application for rectification or cancellation of a trademark is required to be filed before the same Trade Marks Registry where the application for its registration was filed. The application should be made in duplicate on Form TM-O, accompanied by a statement of case setting out the nature of the Applicant’s interest, facts upon which the case is based, and the relief that is sought. Generally, the trademark rectification is filed by the owner of the registered trademark, but it can also be filed by any other person or entity affected with solid and convincing evidence. After receiving the application, the Registrar of Trademarks or the Appellate Board will issue a notice and an opportunity of being heard to the concerned parties. Based on the evidence produced and heard, the Registrar or the Appellate Board may either cancel, vary, make or remove the entry in question. Knowing the procedure is important to properly file and get a favorable outcome from the rectification proceedings. 

6. Impact of Trademark Rectification on the mark

After understanding the process and grounds for filing a Trademark Rectification application in India, it is important to know the impact it has on the trademark itself. The rectification process helps in rectifying any mistakes or errors made in the register after the registration of trademarks. The rectification can help in removing trademarks that have been wrongly registered or have expired but still present in the register.

However, it is important to note that rectification can also lead to the cancellation of trademark registration. Therefore, the rectification process must be done with caution, and any aggrieved person, third party, or the trademark holder must file the application for rectification only after proper evaluation of the situation.

Once the rectification application is filed, both parties will be given an opportunity to be heard, and based on their arguments, the trademark will either be rectified, canceled, or even removed. Jurisdiction plays a very important role throughout the process, and rectification applications must be filed in the trademark office where the original application for registration was filed.

In summary, trademark rectification can have a significant impact on the trademark itself. It is crucial for everyone involved in the process to approach it with caution and seek specialist advice if needed, to ensure that the distinctive character of the mark is maintained throughout the process. 

7. Common reasons for filing Trademark Rectification application

Moving on to the common reasons for filing a trademark rectification application in India, there are several grounds provided under Section 57 of the Trade Marks Act 1999. An aggrieved party can apply for the rectification or cancellation of a registered trademark due to contravention or failure to observe a condition of the trademark already entered in the Register, an error in registering the trademark, or non-use of the trademark for a prescribed period of time after registration. Other grounds for rectification include the absence or omission of an entry, registration obtained by fraud or misrepresentation of facts, entry made without sufficient cause, error or defect in any entry, and presence of a mark on the Register contrary to the provisions of the Act. The renewal fee not being paid is another common reason for filing a rectification application. It is important to note that the application for rectification of a registered trademark must be filed before the same Trade Marks Registry where the application for its registration was filed. 

8. Possible outcomes of Trademark Rectification proceedings

After filing an application for trademark rectification in India, there could be several possible outcomes. The rectification proceedings may lead to the removal, expungement, or cancellation of the registered trademark from the trademark registry. It can also result in the modification or correction of certain errors or omissions made in the trademark registration process. In some cases, the rectification proceedings may even lead to the addition of certain goods or services to the registered trademark. It is important to note that the decision of the trademark registry in the rectification proceedings is subject to appeal before the Intellectual Property Appellate Board (IPAB). Therefore, it is crucial to follow proper procedures and seek specialist advice before filing for trademark rectification in India. Maintaining the distinctive character of a registered trademark is equally important to avoid any rectification proceedings or cancellation of the trademark registration. As stated in the Indian Trademark Act, non-use of a registered trademark for more than five years or non-renewal of the original registration can also be grounds for trademark rectification. Therefore, it is essential for trademark owners to be aware of the possible outcomes of the rectification proceedings and take necessary precautions to ensure the protection of their trademark. 

9. Importance of maintaining distinctive character of the mark

Maintaining the distinctive character of a registered trademark is crucial for safeguarding its exclusivity and market reputation. A trademark is considered distinctive if it can set apart the goods or services of one entity from its competitors in the market. The importance of maintaining the distinctiveness of the mark can be observed in the grounds for trademark rectification in India. Under Section 57 of the Trade Marks Act 1999, an application for rectification or cancellation of a trademark can be filed on the grounds of non-use of the trademark for a prescribed period of time after the registration of the trademark or if the registered mark was wrongly remaining on the Register and was contrary to some of the provisions of the Act or was likely to cause confusion amongst the public and trade. An application for rectification of a registered trademark can also be filed if the mark was not distinctive at the time of registration and has since acquired a distinctive character due to its extensive usage and popularity. As specialist advice is necessary to navigate through the complex trademark rectification process, consulting with a reputed trademark attorney can ensure the protection of the distinctiveness of the mark.

“Trademark Rectification in India” also discusses the frequently asked questions about the process. Some common questions include the cost of rectification, the timeframe of rectification, and who can file for rectification. It is best to consult a trademark attorney to have these questions answered accurately. 

10. Specialist advice on Trademark Rectification in India

Specialist advice on Trademark Rectification in India can be very helpful for businesses and individuals who are looking to rectify errors or make alterations in their trademarks. There are various grounds for filing trademark rectification, including errors in the application form, trademark details, and the register. Any person whose trading interests are affected by the presence of the entry in the register can apply for trademark rectification. The process of trademark rectification involves filling out the relevant form with all the details and submitting it to the Registrar or the Appellate Board with the prescribed fees. The rectification can be initiated by the proprietor of the trademark, the registrar, or any aggrieved person. The effect of rectification can be that the Registrar or the Appellate Board can cancel, vary, add, or remove the entry after hearing the case presented by both parties. To ensure that the process is smooth and hassle-free, it is advisable to seek the help of professionals who specialize in trademark rectification. With their expertise, businesses and individuals can rectify their trademarks and protect their intellectual property rights in India. 

11. Frequently Asked Questions about Trademark Rectification in India

1. What is Trademark Rectification in India?

Trademark Rectification refers to the process through which a person applies for the removal of a registered trademark from the Register of Trademarks in case of any contravention or failure to observe a condition of the trademark already entered in the Register or an error in registering the trademark. An application for rectification of a registered trademark can be filed on the grounds of non-use of the trademark for a prescribed period of time after its registration.

2. What are the grounds for Trademark Rectification in India?

Section 57 of the Indian Trade Marks Act 1999 provides for the grounds for Rectification of the Register. These grounds include contravention or failure to observe a condition entered in the Register, absence or omission of an entry, registration obtained by fraud or misrepresentation of facts, error or defect in any entry made in the Register, or the entered mark wrongly remaining on the Register. The renewal fee not being paid is also a ground for Trademark Rectification.

3. Who can file for Trademark Rectification in India?

Any individual who is aggrieved by any means, the trademark holder, or any third person or entity other than the trademark holder or aggrieved person can file for Trademark Rectification.

4. Where can an application for Trademark Rectification be filed?

An application for rectification of a registered trademark is required to be filed before the same Trade Marks Registry where the application for its registration was filed.

5. What is the procedure for Trademark Rectification in India?

The procedure for Trademark Rectification before the Registrar is prescribed under Rules 97 to 100 of the Trade Marks Rules 2002. An application under Section 57 is to be made in duplicate on Form TM-O. The application is to be accompanied by a statement of case setting out the nature of the Applicant’s interest, facts upon which the case is based, and the relief that is sought. Once the application for rectification has been filed, the applicant who filed the application will be given an opportunity of being heard, and then the tribunal may either cancel, vary, make, or remove the entry in question.