Trademark Rectification

Trademark rectification is an essential procedure to amend the mistakes or inconsistencies in a registered trademark. A registered trademark can be required to make rectifications at some point due to various reason including erratum, any clerical error entered during registration of trademark, or change in proprietor of the trademark or management of business.

Chapter VII of the Trademark Act, 1999 deals with the process to rectify and make corrections to the trademark. Under the chapter, Section 57 of the act specifically deals with the power to cancel and to rectify the trademark. The provision states that when an application made to Intellectual Property Appellate Board or the Registrar of trademark by the ‘aggrieved person’, the Registrar or the tribunal shall have the power to make any order as reckoned fit for the cancellation or rectification of registration of a trademark. The expression “aggrieved person” meant any person who are in one way or another substantively interested in the removal of the mark from the register or any person who would be considerably damaged if the mark continues to exist.

Grounds for Cancellation or Rectification

The grounds for the rectification or cancellation by the Appellate Board or Registrar comprises:

1. Contravention or failure to observe a condition entered on the register: In case there is non-compliance or violation of any conditions as per prescribed within the Act, the ground can be raised.
2. Absence or omission from the register of any entry: In case when a trademark is registered without a condition, where it was ought to have been registered with the condition as mentioned under the Act, the ground may be invoked.
3. Entry made in the register without sufficient cause: In case the registration is found to have been made in contravention of any provisions of the Act or Rules, it may be challenged under this ground.
4. Any entry remaining wrongfully on the Register: If it is established that the registration of the trademark is continuing erroneously, the existence of a registered trademark or its entry on the register can be challenged.
5. Any type of error or defect detected in any entry of the Register.

Under these or any other grounds the tribunal or the Registrar may view suitable, they can order for making, removing, rectifying or changing the entry as necessary. The Registrar or the tribunal can also decide on any question that is necessary to decide regarding the rectification of the register. The tribunal or the Registrar can act on their own motion, provided they issue notice to the concerned parties and provide an opportunity for them to be heard.

Any order of the Appellate Board rectifying the register must direct that notice of the rectification be served upon the Registrar in the prescribed manner. Upon receiving such notice, the Registrar shall rectify the register accordingly.

According to Section 58 of the Trademark Act, 1999, the Registrar may on application made by the registered proprietor may make changes including:

1. Correction of Errors: Errors in the name, address, or description of the registered proprietor or any other entry related to the trademark can be corrected.
2. Entering Changes: Any changes in the name, address, or description of the registered proprietor can be updated.
3. Cancelling Entries: The entry of a trademark can be cancelled from the register.
4. Striking out any goods or classes of goods or services from those in respect of which a trade mark is registered.

The Registrar can make any consequential amendment or alteration in the certificate of registration, which requires the certificate to be produced to them. Upon application by a registered user of a trademark and after notifying the registered proprietor, the Registrar may correct any error or enter any change in the registered user’s details.

Procedure for Rectification Application

Section 97 of the Trade mark Act, 1999, prescribes the procedure for application for rectification before the IPAB. An application for rectification made to the Appellate Board under section 57 must follow the prescribed form. A certified copy of every order or judgment of the Appellate Board relating to a registered trademark must be communicated to the Registrar, who shall then amend the entries or rectify the register in accordance with the order.

The Rule 97 to Rule 100 of the Trade Mark rules, 2017, prescribes the Rules for rectification and correction of register. According to the rule, an application to the Registrar for rectifying the trademark must be made using Form TM-O. This form must include a detailed statement specifying the nature of the Applicant’s interests, the facts of the case and the relief sought by the applicant. For those who are not the registered proprietors, the application and accompanying statement must be submitted to the Trade Marks Registry. If there are registered users of the trademark, the application must include copies for each user. The Registrar will then distribute copies to the registered proprietor, each registered user, and any other interested parties within the period of one month.

Within the period of two months from receiving the application copy, the registered proprietor has to submit a counter statement on Form TM-O, contesting the grounds. The time period to submit counter statement can also be extended by one month. The Registrar will then send a copy of this counter statement to the applicant within one month of its receipt. If no counter statement is filed within three months, the applicant must provide evidence supporting their application for rectification.

Any person with an interest in the trademark can apply on Form TM-O to intervene in the proceedings. The Registrar will decide on granting such leave based on a hearing (if required) and may impose conditions, including security for costs.

The Registrar can propose rectifications under Section 57(4), issuing a written notice to the registered proprietor, each registered users, and any other interested parties. This notice will state the grounds for rectification and within the period of one month period, the application of hearing should be made. If no response is received within the specified period, the Registrar may proceed with the rectification. Any decisions to rectify will be communicated in writing to the registered proprietor and each registered user.

Conclusion

Trademark rectification is an essential procedure that ensures that the representation of goods and services through trademarks is done accurately and the trademark registered is duly protected under the Act. By correcting the errors and updating the information of the trademark, the interest of the trademark and the applicant shall be retained. By ensuring the transparency and credibility of trademarks, this procedure helps in preventing any sort confusion or misappropriation of the trademark.