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TRADEMARK RECTIFICATION

TRADEMARK RECTIFICATION

Registering your trademark is essential for safeguarding your business identity. A trademark, whether a word, name, device, label, or number, distinguishes your goods or services from others in the market. It is a protectable asset under Indian laws and regulations. Failure to register leaves your brand vulnerable, as others may seize the opportunity to register it in their name. Interestingly, you can even register a trademark you plan to use in the future. It’s not advisable to delay registration until after usage begins, as this increases the risk of duplication and potential legal challenges.

Many businesses make the mistake of registering their trademark only after it has been in use. This approach is not recommended, as the market exposure without registration exposes the brand to a higher risk of being copied or misused. Taking a proactive stance by registering your trademark is crucial, as it establishes legal protection in India. This not only secures your brand name but also prevents unauthorized duplication and protects against unfair competition. By making trademark registration a priority, you ensure the distinct identity of your brand in the competitive market landscape.

What is trademark Rectification?

The Indian Trademark Act allows for the rectification of registered trademarks in certain circumstances. Rectification in simple terms is correcting or making changes to an existing error. It’s possible that a trademark/service mark was incorrectly registered or that it stayed on the register after it expired. The legal process of correcting or rectifying an error or omission in a trademark’s details as they are recorded in the trademark register after registration is known as rectification. chapter VII of the Trademark Act 1999 deals with the rectification and correction of the register. section 57 lists down the grounds for rectification.  The applicant may file a request for rectification at any time, regardless of whether the trademark was registered or not or when it was registered. The applicant may also seek cancellation of the trademark under the same facility.

Forms of Trademark Rectification :

Rectification under Section 57:

Under Section 57 of the document, the High Court or the Registrar can cancel or vary the registration of a trade mark if there has been any contravention or failure to observe a condition entered on the register.

Rectification under Section 125:

Section 125 states that in certain cases, an application for rectification of the register should be made to the High Court. This includes situations where the validity of the registration of a trade mark is questioned in a suit for infringement.

Rectification under Section 113:

Section 113 outlines the procedure to be followed when the accused in an offense related to a registered trade mark pleads that the registration is invalid. If the court finds the defense prima facie tenable, it adjourns the proceedings and allows the accused to file an application for rectification of the register with the High Court.

Who can file for rectification of TM ?

The party who is aggrieved may submit a petition to have the registered mark removed, corrected, or canceled. Any person connected to a trademark registration or negatively impacted by one has the right to request rectification, per Section 57 of the Act. A person whose trading interests are impacted. Anyone whose interests are indirectly impacted, such as a trade mark holder or third party, can fall under this category.

Where to file for TM Rectification?

In order to obtain trademark rectification or cancellation, an application may be submitted to the Trademark Registry where it got registered or, the Appellate Board, or the Tribunal, depending on the situation and jurisdictional limitations.

Grounds for applying TM Rectification :

Trademark rectification refers to the process of correcting or altering the registration of a trademark. Here are the key grounds for trademark rectification:

1. Absence, omission, or error in the register: If there is an absence or omission of any entry in the register, or if there is an entry made without sufficient cause, or if there is an error or defect in any entry in the register, rectification can be sought (Section 57).

2. Invalidity of registration: If the validity of the registration of a trademark is questioned, an application for rectification can be made to the High Court. The court may adjourn the proceedings to allow the accused to file an application for rectification on the grounds of invalidity (Section 113).

3. Threats of legal proceedings: If a person threatens another person with legal proceedings for trademark infringement without sufficient justification, the aggrieved person can bring a suit and obtain a declaration that the threats are unjustifiable (Section 142).

4. Contravention or failure to observe a condition: The registration of a trademark can be canceled or varied if there is evidence of contravention or failure to observe a condition entered on the register in relation to the trademark (Section 57).

The various examples of the above include: 

  1. Registration was made without sufficient cause or registration obtained by misrepresentation of facts.
  2. Mark wrongly remained in the register as to class, description etc.
  3. Making changes, amendments or modifications in connection with any registered trademark as per recent advancement or due to change in addresses etc. 
  4. Non-use of the registered mark for more than five years by the registered trademark holder.
  5. Non-renewal of the original or previous registration.
  6. Registration is obtained by fraud or suppression of material facts or giving false statements. 
  7. Inclusion of certain goods or services in the already registered class.
  8. Falls under any of the grounds of refusal under Sections 9 and 11.

Procedure for filing TM Rectification :

  1. Application Form: The applicant should use Form TM-O, which is the designated form for filing an application for rectification of a trademark.
  2. Grounds of Rectification: The applicant must draft the grounds of rectification in detail and verify them. These grounds should be attached to the application form.
  3. Statement of Case: The applicant needs to draft a statement of case, providing full details of their interest, the facts supporting their case, and the relief they seek. This statement should be verified by the applicant and accompanied by an affidavit.
  4. Submission of Application: The application, along with the attached grounds of rectification and statement of case, should be submitted to the Trade Marks Registry. If there are registered users, additional copies should be provided for each registered user.
  5. Verification: The applicant must verify that the facts mentioned in the application are true and correct to the best of their knowledge and belief.
  6. Detail of the Person Submitting the Application: The person submitting the application should provide their signature, name, and authority.
  7. List of Documents Attached: If any documents are attached to the application, they should be listed separately.

Conclusion :

In conclusion, trademark registration is essential for protecting your business identity in India, distinguishing your goods or services, and safeguarding against unauthorized use. Trademark rectification, a legal process, involves correcting errors or making changes to a registered trademark’s details. To avoid rectification, cancellation, or removal, proper precautions must be taken, such as timely renewal and ensuring continuous activity of the trademark. It’s imperative to preserve the distinctiveness of the trademark to maintain its presence and reputation in the market. A trademark unused for five years or lacking genuine market utilization for three years or more is liable for removal from the Trademark Register, emphasizing the need for active maintenance to prevent cancellation or temporary removal.

Moreover, seeking legal assistance is advisable to navigate the complexities of trademark registration, rectification, and maintenance effectively. Recently the Intellectual Property Appellate Board (IPAB) has been abolished and substituted by the High Court, which will have significant implications for trademark-related matters. Pending cases before the IPAB will be transferred to relevant High Courts. As the government addresses the challenges posed by this transition, businesses should stay informed and seek professional legal guidance to protect their trademarks effectively.

FAQ

Frequently Asked Questions (FAQs)

What requires trademark rectification in a majority of the circumstances?

Spelling errors in Trademarks, errors in the class chosen, adding new goods or services, and false or incorrect details about the proprietor are a few circumstances that require Trademark Rectification.

What are the documents required for trademark rectification?

  • Form TM-O shall be filed along with the supporting documents for which rectification is sought. The nature of the interest of Applicant, the facts of his case and the relief sought are to be clearly stated.

What are the forms for Trademark Rectification?

Some of the methods of trademark rectification are:

  1. The proprietor can request correction or cancellation by submitting Form TM-16; or 
  2. The registrar may initiate rectification for which TM -M is filed; or
  3. Any aggrieved person can seek rectification by filing Form TM-26.
What is Trademark Cancellation?

Unlike Trademark Rectification which is a process to rectify and correct the errors in a registered mark, a Trademark Cancellation is done by the registrar on an application received from the registered user of a trademark or any person or by the Registrar on his own motion on grounds specified under section 50.

TRADEMARK RECTIFICATION
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