Rectification of Trademark in India: Procedures

Deepti Shikha

24 Aug, 2020

Trademark Registration is a type of intellectual property rights under which a visual symbol like word, name, color combination, etc. is used by businesses to distinguish its goods and services from the other similar products or services. After the filing of the Trademark application, the Trademark Registrar would process the application. If the Trademark Examiner notes any concern in the application formalities, he has the authority to request rectification of the trademark application. Trademark Rectification is a legal procedure to correct or rectify any error or omission that has been made in the details of a trademark after trademark registration. A mark or symbol has been wrongly registered or has remained in the register even after its expiry needs rectification. The Indian Trademark Act, 1999, provides an opportunity to file for rectification of trademark of the registered trademarks.

What is Trademark Rectification in India?

The word rectification means to correct any mistake or error. In case the registrar indicates a mistake while applying for a trademark registration application or after the registration of the trademark, the applicant can apply for trademark rectification. However, the rectification of trademark not only includes correction or an error but also incorporates any change or alteration which the applicant wants to make in the trademark application or after receiving the certificate of registration. The applicant can apply for rectification of trademark anytime whether the mark is registered or is to be registered. The applicant can also apply for the cancellation of the trademark under the same facility. In case the applicant’s registered logo is not in use for five years, and three months then a petition for the removal of such mark from the list of the registered trademark is made by the applicant. The applicant must file the rectification of trademark application in form “TM-16” along with prescribed fees.

What are the Grounds for Filing of Trademark Rectification in India?

Various grounds have been set up by the office of the Registrar of Trademarks for rectification, which has is mentioned below: To alter the details of the applicant either be his address or any other information.

• To alter the details of the applicant either be his address or any other information.
• To change the name of the applicant for trademark registration.
• To change the class of trademark.
• To alter the description or classification of goods and services or mark/symbol.
• To change the mark or design or any other content of the mark.
• To rectify any mistake or error made while applying for trademark registration.
• For rectifying any mistake or error in the information entered in the register of the trademark registrar.
• Not renewing within due time of renewal.
• Nonpayment of the renewal fee.
• Any other grounds specified by the trademark registrar.
• Non-conformance to any or more grounds stipulated in Section 9 and Section 11 of the Indian Trade Marks Act of 1999^[1].

Who Can File Petition for Rectification of Trademark in India?

Any aggrieved party who is affected by such entry may file for trademark rectification on the grounds provided by the Act. A petition for the rectification of trademark cannot be filed anonymously because it has the onus to prove the following facts:

1. That the petitioner is actually affected.
2. Proper evidence specifying that the mark is not used by the trademark owner needs to be submitted during the course of proceedings by the aggrieved person.

Note-‘Aggrieved person’ means any person whose trading interests get affected by the presence of the registration on the register.

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Where to File for Rectification of Trademark in India?

For trademark rectification, an application can be filed before the Trademark Registry appropriate Jurisdiction. The appropriate jurisdiction in India is Mumbai, Chennai, Kolkata, and Ahmadabad. The Petition for the rectification of the trademark must be filed in the same jurisdiction where the application for a trademark has been made.

What are the Documents Required for the Rectification of Trademark in India?

Procedure for Rectification of Trademark in India

The application for trademark rectification must be filed with the Zonal Registrar of Trade Marks or with the Intellectual Property Appellate Board (IPAB). The procedure for the rectification of trademark involves the following compulsory requirements:

• The application form used for the rectification of trademark cancellation must be filed in triplicate.
• The application is to be made in Form TM-26 OR Form TM-43 for the collective or certification of marks.
• A clear statement of grounds, associated with the application.
• The registrar on receipt of the application serves notice to the registered proprietor to file a counter statement.
• After filing of the counter-statement, the matter arrives at the evidence stage. The parties file their respective evidence in the form of Affidavit. The next step after this is hearing, and subsequently, an order is passed.

What are the Precautions needed for the Rectification of the Trademark?

The precautions to be undertaken to prevent the rectification or removal of the trademark from the register is mentioned below:

1. Renewal of the trademark from time to time.
2. Preventing the original character of the trademark and avoiding it’s becoming deceptive.
3. Not keeping the trademark unused for a period exceeding five years and three months.

Case Law

Country Inn Pvt. Ltd. v. Country Inns and Suites by Carlson Inc.& Anr. – Delhi High Court [April 23, 2018]

In this suit for infringement of the plaintiff’s registered trademark ‘COUNTRY INN filed in 2008’, the defendant a registered proprietor of ‘the trademark COUNTRY INN & SUITES BY CARLSON’ filed a written statement in 2009 pleading invalidity of the registration of the plaintiff’s trademark. In 2017, it filed for rectification or cancellation of proceedings in respect of the plaintiff’s logo before the Intellectual Property Appellate Board. Subsequently, it filed another application before the High Court seeking permission to proceed with them and stay of further trial in the infringement and passing off suit until their disposal. The court, however, relying upon the Supreme Court’s judgment in Patel Field Marshal Agencies case, dismissed the application with a cost of Rs. 2 lakhs, considering it to be frivolous, ‘mala fide and an ‘abuse of process of law’. The court held that the defendant is deemed to have abandoned its claim for filing rectification proceedings in view of the fact that these proceedings were filed after a delay of seven years from the date of framing of issues.

Conclusion

 Chapter VII of the Trade Marks Act of 1999 consists of provisions and rights regarding the trademark rectification and cancellation of India. Generally, the owner of the registered trademark makes an application for the rectification of the trademark. The rectification of trademark means making any type of changes or refinements in the previously registered trademark by the owner of the trademark. However, this demand can also be filed by any other person or entity that is affected due to its unfair use. The rectification form to the trademark examiners must be made on the reasons as to why the mark should be prevented from further processing. Rectification is done once the examiner is satisfied by the given reasons.

Also, Read: What Is Trademark Litigation in India?