January 16, 2023
Trademark Rectification in India
A trademark is an intellectual property right that provides protection for a brand’s unique mark, symbol, design, expression, and so on that differentiates it from any other products available on the market. The registered trademark must adhere to the Trademark Act’s requirements. Whenever there is a defect in registering the trademark or in contravention to the provisions of the act, a rectification procedure is followed to remove the trademark from the trademarks register.
Trademark Rectification is a legal process for rectifying or correcting any defect in the specifics of a trademark as recorded in trademark register. A trademark if incorrectly registered or if it is still available in the trademark register after the expiration of its registration period or has been malafidely applied and registered. Within each of these situations, the Indian Trademark Law enables its rectification of trademark applications.
When can a trademark be rectified?
If the proprietor of the trademark discovers small mistakes or determines that some modifications are required to correct errors once it has been registered, the applicant could thus file for rectification with the Registrar. The Act allows for rectification if a trademark is incorrectly registered or remains incorrectly in the register. Any person who is dissatisfied with the trademark may seek rectification or cancellation. An aggrieved person is someone whose interests are harmed by the existence of the entry within the register. The Registrar may also rectify/cancel a trademark on its own motion.
Grounds for trademark rectification in India
The following are the most common grounds for filing a rectification application:
- On grounds of non-use of trademark for at least 5 years.
- breach or failure to observe a condition entered in the Register in relation to the registration of the mark
- The mark registered is similar to an already registered mark.
- Error or defect in any entry made in the Register
- The particular removal of an entry, such as a disclaimer, a situation, or a restriction.
- The mark is incorrectly remaining on the register
- Whenever the renewal fee is not paid.
- A trademark may be removed from the register if it was obtained through fraud, concealment or by misrepresenting any material fact.
Who can file for trademark rectification?
Any person who is affected by a trademark entry on the register can file for rectification of trademark or the Registrar can also initiate the rectification proceedings on its own motion on any of the grounds specified above.
Important factors to consider when filing a trademark rectification
- Proper and detailed submissions: It is critical that a proper and detailed statement of case is made out in a trademark rectification application making out all the grounds for rectification and arguments in support along with detailed facts of the matter. By submitting a proper and detailed statement in support of the trademark rectification, one can significantly improve the probability of successful trademark rectification.
- There is no guarantee: Filing a trademark rectification doesn’t really guarantee trademark rectification. Trademark rectification is a procedure, and only the Trademark Registrar could allow rectification based on the facts and circumstances of each matter. As a result, one can only make their best efforts to make out their best case before the Trademark Registrar to get the outcome in their favor.
- Timeline: Following the filing of a trademark rectification, it sometimes necessitates a time-bound action from the rectification applicant or registered proprietor. As a result, it is essential to monitor the status of the rectification application on a regular basis and take the necessary actions until disposal of rectification.
How to prevent trademark rectification or cancellation in India?
In order to avoid rectification or cancellation of a trademark in India, a registered proprietor must:
- Renew their mark on a regular basis.
- Keep the mark’s distinctive and follow any conditions/ restrictions imposed while entering the trademark on the register.
- Not leaving the mark unused for a period over five years from the date of entry of the mark in the register.
Documents required for trademark rectification
The following documents are required to file a trademark rectification or cancellation:
- A duly filled Form TM-O for rectification/cancellation of a trade mark must be moved through online or physical mode before the concerned jurisdiction where the mark is entered in register.
- A case statement that outlines the facts supporting the claim, the relief sought, and the nature of the applicant’s interest.
How rectification affects the trademark?
The impact of trademark rectification is that if the Registrar accepts the application for Rectification, they could remove the mark, add conditions, add/amend the specifications or in worse case delete the trademark in which the rectification is filed.
Consequences of valid trademark rectification on your trademark
Whenever an application for rectification, cancellation or removal is filed, the Registrar notifies the registered trademark holder to submit a counter response after the rectification application is received. After the response stage, evidence of both parties is recorded and a hearing is held. After hearing both the parties and reviewing the documents on record, the rectification application is accordingly allowed or dismissed.
To defend your registered trademark from rectification, cancellation, or removal, you must take the necessary precautions, for instance renewing the trademark on a regular basis, or continuing to use the trademark and not leaving it unused for more than five years, etc.
frequently asked questions
1. How to apply for rectification?
The trademark rectification application online can be filed by filling the “TM-O” form for rectification/cancellation and pay the applicable fees.
2. What is the defensive registration in trademark rectification applications?
By general rule, a trademark is granted protection with respect to the goods or services it is used and granted registration for. To extend the protection over all classes, trademark owners file applications in all 45 trademark classes despite the fact that the mark is only used or ever intended to be used in a few and not all of the classes. This is known as defensive registration. The courts have also held in various cases as well against the practice of defensive registrations. As a result, if a trademark rectification is filed against such marks and it is demonstrated that the proprietor has no intention of using the mark for the products and services it is registered, the mark could be removed from the register.
3. What is the rectification of a trademark?
Trademark rectification in India is the legal procedure of correcting a mistake in a trademark registered with the Indian trademark registrar.
4. What is the effect of rectification?
Following the filing of the rectification application, if it is found that any of the grounds for rectification are met, the registrar may remove, decline, or rectify the trademark entry within the registry.
5. Who can file for trademark rectification?
Any individual who is distressed with a trademark that has been registered may seek rectification by demonstrating the inconsistencies in registration.
6. What is the cancellation of the trademark?
Trademark cancellation refers to an application to have a recently registered trademark removed from the register of trademarks.
7. How much does it take to file trademark rectification?
The preparation and filing of the trademark rectification in India takes 5-7 days.
8. What is the government fee for filing rectification/cancellation?
The government fee for filing rectification/cancellation is INR 2700/-.
9. Can an application for rectification be made when there is suit for infringement is pending before the civil court?
The application could be made, but if a suit for infringement is pending before the civil court, the result of the suit is contingent to the decision of rectification application with regard to the validity of the trademark.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
