TRADE MARK RECTIFICATION

Once a mark is registered there is no confirmation that it won’t be cancelled or altered. Rectification of the Trade mark is done by cancellation or alteration of the registered Trade mark by imposition of limitations in usage of the mark or by imposing additional conditions or by imposing limitation in territorial activities. Rectification can be done by filling a rectification application. However, in some crucial situation, the Registrar has the power to rectify by suo motu, only after following the proper prescribed procedure.

JURISDICTION

Filing a rectification application shall be made in the office or branch office with appropriate territorial jurisdiction, where the application for registration was filed or before the Appellate board in case where any type of case regarding the registered mark is pending before the court.

GROUNDS FOR RECTIFICATION

There are few grounds under which the cancellation or alteration is eligible:

  • In case the entry or registration has wrongfully being granted without following the proper and legitimate registration of mark;
  • In case the entry has or registration has wrongfully being maintained;
  • In case the renewal fee has not been paid;
  • In case the mark does not have any bona fide intention for use
  • In case the registered has not been used for more than 5 years continuously.
  • Non conformity under section 9 and 11 of Trade Marks Act, 1999.

Though few precautions can be taken by the registered owner to avoid such circumstance as mentioned earlier:

  • Shall use the registered mark commercially with a bona fide intention within 5 years from the date of registration.
  • Shall renew the registered mark from time to time.
  • Shall avoid Ghost marks
  • Shall license the mark following the proper procedure.
  • Not to entertain any type of infringement.

The registered owner has the right to cancel or alter any particular provision or clause of the registered mark by filing a proper application. Though alteration is eligible if it does not affect the identification of the mark and is not similar to the other registered Trade Marks.

PROCEDURE OF FILING RECTIFICATION APPLICATION

For cancellation or alteration of the registered mark, the applicant shall file FORM TM-26 or TM- 43, as per the requirement. It shall mention the ground under which such rectification shall be considered, for the specified mark. The application shall accompany by the prescribed fees. Once the application is submitted, the Registrar issues a notice to the registered owner to file a counter statement for such allegation or application. On filling the counter statement both the parties will get equal opportunity for hearing as well as providing evidences on their behalf. Followed by passing of judgment.