Trademark rectification in India is a legal process to correct, modify, or remove an entry in the Register of Trademarks. This procedure is crucial for maintaining the accuracy and integrity of trademark records and ensuring that registered trademarks accurately reflect the owner’s rights and the actual use of the mark in the market.
It’s governed by Section 57 of the Trademarks Act, 1999, and the Trademarks Rules, 2017.
Why is Trademark Rectification Necessary?
Rectification can be initiated for various reasons, including:
Correction of Errors
- Clerical or Typographical Mistakes: Simple errors like incorrect spelling of the proprietor’s name, wrong address, incorrect class of goods/services, or minor inaccuracies in the trademark representation (e.g., a wrong shade of color in a logo).
- Errors in Classification: If the goods or services were incorrectly classified during the initial registration.
Removal for Non-Use
- If a registered trademark has not been used for a continuous period of five years and three months from the date of its registration, any aggrieved person can apply for its removal from the register. This is a common ground for rectification, encouraging actual use of registered marks.
Wrongful Registration
- If a trademark was registered without sufficient cause, or if it was wrongly remaining on the register. This includes situations where:
- The mark lacked distinctiveness (violates Section 9 of the Act) at the time of registration.
- The mark was similar to an already existing trademark (violates Section 11 of the Act), leading to confusion.
- The registration was obtained by fraud, misrepresentation, or concealment of material facts.
- The mark is deceptive or misleading as to the nature, quality, or origin of the goods/services.
- The mark has become generic over time (e.g., a brand name becoming the common word for a product).
- If a trademark was registered without sufficient cause, or if it was wrongly remaining on the register. This includes situations where:
Violation of Conditions
- If the trademark was registered subject to certain conditions, and those conditions have been contravened or not observed.
Omission of Entries
- If any important entry, such as a disclaimer, condition, or limitation related to the trademark, was omitted from the register.
Change in Details
- To record changes in the proprietor’s name or address (though this is a specific type of amendment, it falls under the broader scope of rectification).
Who Can File for Trademark Rectification?
An application for rectification can be filed by:
The Registered Proprietor (Owner)
If the owner identifies mistakes or omissions related to their own trademark’s entry in the register (e.g., correcting their name, address, or minor details).
Any “Aggrieved Person”
This is a broad term and includes anyone whose interests are affected by the existence of the entry in the trademark register. This could be:
- A competitor who believes the mark was wrongly registered and hinders their business.
- An applicant whose similar mark was refused due to the existence of the mark sought to be rectified.
- Someone who has used a similar mark prior to the registration date of the mark sought to be rectified.
The Registrar of Trademarks (Suo Motu)
The Registrar can also initiate rectification proceedings on their own motion if they discover an error or irregularity in the register.
Where to File for Trademark Rectification?
The application for rectification should be filed before:
- The Registrar of Trademarks at the appropriate Trademark Registry office where the original application for registration was filed.
- (Historically, it could also be filed before the Intellectual Property Appellate Board (IPAB), but with the dissolution of IPAB, these powers have largely been transferred to the High Courts exercising appellate jurisdiction over the Registrar). Therefore, for substantial rectifications like removal, the High Court is the relevant forum.
Procedure for Trademark Rectification in India
The process varies slightly depending on who initiates the rectification and the nature of the change.
A. Rectification Initiated by the Registered Proprietor (Minor Corrections):
Form TM-P (or sometimes TM-M for specific amendments)
The proprietor files an application in the prescribed form, specifying the changes to be made.
Details & Evidence
Provide the trademark registration number, the exact nature of the error, and any supporting documents (e.g., proof of correct name, address).
Fees
Pay the prescribed government fee.
Scrutiny & Approval
The Registrar examines the request. If satisfied, the corrections are made in the Register.
B. Rectification Initiated by an Aggrieved Person (or by the Registrar):
This is a more adversarial process, often resembling an opposition proceeding.
Filing the Application (Form TM-O)
The aggrieved person (applicant for rectification) files an application in Form TM-O (Application for Rectification of Register). This form must be accompanied by a “Statement of Case” clearly outlining:
- The facts supporting the claim.
- The legal grounds for rectification (citing relevant sections of the Act).
- The nature of the applicant’s interest (how they are an “aggrieved person”).
- The relief sought (e.g., removal, variation, or correction of the entry).
Notice to Registered Proprietor
The Registrar serves a copy of the rectification application and statement of case to the registered proprietor of the trademark.
Counter-Statement by Proprietor
The registered proprietor must file a “Counter-Statement” within 2 months of receiving the notice, responding to the allegations.
Evidence Stage
Both parties get an opportunity to file evidence (usually by way of affidavits and supporting documents) in support of their respective claims.
- Applicant for rectification files their evidence first.
- Registered proprietor files their evidence in response.
- Applicant for rectification may file evidence in reply.
Hearing
After the evidence stage, a hearing is scheduled before the Hearing Officer (or the High Court, depending on the forum). Both parties present their oral arguments.
Decision
The Hearing Officer or High Court considers all submissions and evidence and issues an order either allowing or rejecting the rectification application.
Updating the Register
If the rectification is allowed, the Register of Trademarks is updated accordingly.
Government Fees for Trademark Rectification
The government fees for filing an application for rectification (Form TM-O or TM-P depending on the nature) are:
For filing an application for rectification of the register (Form TM-O)
- E-filing: ₹2,700 per mark, per class.
- Physical filing: ₹3,000 per mark, per class.
For minor modifications/amendments initiated by the proprietor (often via Form TM-P, specifically for change in name/address)
- E-filing: ₹900 per mark, per class.
- Physical filing: ₹1,000 per mark, per class.
(Note: These are government fees. Professional fees for drafting the application, statement of case, evidence, and representing at hearings by a trademark agent or attorney would be separate and can vary significantly based on the complexity of the matter.)
Due to its complex legal nature, seeking guidance from a our trademark experts is highly recommended.