TRADE MARK RECTIFICATION

Introduction

TRADE MARK RECTIFICATION

Any person aggrieved by the registration of a trademark can file a rectification application against the application either to remove/amend/rectify the same.

Rectification of the Trademark is done by cancellation or alteration of the registered Trademark by the imposition of limitations in the usage of the mark, or by imposing additional conditions or by imposing limitations in its territorial activities.

Rectification can be done by filing a rectification application under FORM TM-O. However, in some crucial situations, the Registrar has the power to rectify it Suo motu, if any error has been identified by the Registrar.

JURISDICTION: Territorial in Nature

Filing a rectification application shall be made before the Registrar of the Trade Marks Registry where the trademark application was filed for registration.

GROUNDS FOR RECTIFICATION

Section 57 of the Trade Marks Act, 1999, provides certain grounds to file a Rectification Application. There are a few grounds on the basis of which the cancellation or alteration of a trademark registration can be made:

·         In case a trademark entry has been made wrongfully in contravention or failure to observe any condition

·         In case the trademark registration has wrongfully been maintained in contravention or failure to observe any condition;

·         By absence/omission of an entry or by an entry made without sufficient cause, or by an entry wrongly remaining on the Register;

·         In case the validity of trademark registration is over and the renewal period has already expired;

·         In case the trademark does not have any bona fide intention for use

·         In case the registered has not been used for more than 5 years continuously.

·         The Registration is in contravention of the provisions under Sections 9 and 11 of the Trade Marks Act, 1999.

PROCEDURE OF FILING RECTIFICATION APPLICATION (Chapter VII of the Trade Marks Rules, 2017; Rules 97 to 100)

·         For making, expunging, or varying an entry related to a trademark/collective mark/certification trademark, an application under Sections 47, 57 68, or 77 shall be made by the Petitioner (the aggrieved person) in Form TM-O, as per the requirement. The Petitioner shall provide a statement setting out the grounds on which the rectification application is based, state the nature of the Petitioner’s interest, as well as the relief that the Petitioner seeks. The Petitioner shall file the rectification application by paying the prescribed fees.

·         Such an application is ordinally transmitted by the Registrar within one month to the registered proprietor and registered user/s.

·         Within three months (2 months + 1 month in aggregate) of the receipt of the application, the Respondent is required to submit a counter-statement. If no counter-statement is filed then the Petitioner (the Applicant) can proceed further with filing evidence under Rule 45(1).

·         However, on filing the counter statement both parties will get an equal opportunity to provide evidence on their behalf as well as appear for the hearing. Followed by the passing of judgment by the Registrar.  

·         The registered proprietor of a trademark may apply before the Registry to alter the trademark and the registrar may refuse or grant such a request as he deems fit. The registrar may advertise the application of a trademark if it is expedient to do so and can be opposed by any third person within the prescribed time. In such a case the registrar will decide the matter after hearing both parties.

How Can A Registered Trademark Proprietor Prevent Such Adverse Situations?

The registered trademark owner should ensure that-

o   The mark is commercially used in a bona fide manner within five years from the date of registration.

o   The registration of the trademark application is renewed from time to time.

o   The registered trademark was adopted distinctively and with enough capability to distinguish the goods/services thereunder from those of others in the market.

o   Duly reply to any rectification application filed against the registration of the trademark application.

o   Gather sufficient evidence to prove rightful adoption, prior or bona fide concurrent use in the market to support their claims to subsist their registration