Overview of Trademark Rectification
Rectification is the legitimate technique to address or correct a mistake or an omission that has been made after the Trademark Registration is done and has been recorded in the trademark register. It is possible that the trademark has been registered in a wrong manner or it may remain available on the register even after expiry. The Indian Trademark Act provides us with the solution to file for rectification in such cases.
Proceeding further into Trademark Rectification lets first understand what “Trademark Rectification” is and when does it appear in trademark registration? Any sort of changes, modification, rectification or alteration performed in the registered trademark or in the Register of Trademarks is known as Trademark Rectification.
In India Chapter VII of the Trademark Act of 1999 governs the right related to trademark rectification. Section 57 of the Trademark Act 1999 states that any individual concerned of such entry in the trademark register can file an application for the trademark rectification. However, trademark rectification does not work in every situation and error can lead to cancellation of trademark registration.
What is Rectification of Trademark?
Trademark is an intellectual property right which protects unique mark, symbol, design, expression, etc of a product which distinguishes it from other products in the market. The registered mark has to be according to the norms of the Trademark Act. If there is any error in the trademark then a process of rectification is followed which rectifies r corrects the trademark and makes it eligible for trademark registration.
Rectification of trademark is a legal procedure to rectify or correct any error or omission that was made in the particulars of a trademark as has been recorded in the registers of trademark. A mark may get wrongly registered during the trademark registration or may even remain in the registers of trademark after its expiry. In all these cases, the Indian Trademark Act has a provision for filing for rectification of the registered trademark.
Who can file for Trademark Rectification?
- Any person aggrieved by the mark if the mark is looking similar to an existing mark.
- The proprietor of the trademark can himself record the error and file for rectification of error.
- It can be filed by any third person or other individual or entity being misled by that mark.
Note: The applicant is required to submit the proof whenever he is filing for removal of any registered trademark from the register of trademarks.
How Rectification affects the Trademark?
After the application of rectification is filed, the applicant is given the opportunity of being heard and accordingly they may expel, drop, or rectify the trademark entry in the registry.
What are the Common Grounds for filling an application for Trademark Rectification in India ?
The common grounds on the basis of which the application for rectification is filed are:
- Not using registered trademark for over 5 years or more.
- Non-renewal of the previous trademark
- Due to the latest changes, amendments, modification, in connection with the registered trademark according to the recent advancement.
- Addition or Inclusion of certain new classes of goods or services in case it is against the business scope of the registered trademark
- Conditions which are not in conformity with any of the grounds stipulated in Section 9 and Section 11 of the Indian Trade Marks Act of 1999.
- The specific omission of an entry for example a disclaimer, a condition or a confinement
- Where the registration was acquired by distortion of prior registered mark and needs adequate reason for registration.
- Situation where the mark was wrongly staying on the register and causing confusion in the market.
- When the renewal fee has not been paid.
- A trademark could be removed from the register in case the registration is obtained by fraud or where the registration was made by suppressing any material fact or by making any false statement or misrepresentation of any fact.
Where to file for trademark rectification?
An application for trademark rectification or cancellation can be filed before the Trademark Registry in the respective trademark jurisdiction i.e. Delhi, Mumbai, Kolkata, Chennai and Ahmadabad where the application of trademark was filed originally for obtaining the registration.
How to avoid Trademark Rectification?
- Keep renewing your trademark registration
- Doing everything to protect the particular trademark and not letting it becoming deceptive or misleading.
- Continuous use of the trademark for a long time and not keeping it unused for a period beyond 5 years.
- Take immediate legal action as soon as any infringement is observed.
Registration Procedure for Trademark Rectification
- In situations where the trademark registrar has denoted the trademark registration as “Formalities Check” or “Send back to EDP”, then the applicant is given the opportunity of being heard or to redress the error and so the application requires to be resubmitted. In such a case, the change in trademark has to be set up so as to address all the errors as reported by trademark examiner.
- The application form which is the Form TM-O is used for requesting rectification of trademark and it has to be filed in triplicate.
- It is important to ensure that the application for trademark clearly mentions and explains all the grounds on the basis of which the rectification application is filed.
- You should make your argument strong enough with sufficient proof to get the rectification done.
- Aside from this we firmly recommend in case of Trademark Rectification contact an expert, and take effective help of the trademark rectification expert, who is very much educated about the most recent updates and advancements in the trademark market.
Arvisa has a team of experts and professionals who willingly provide their masterly services for all tasks related to Trademark rectification, trademark registration, trademark objection.
Consequences of Valid Trademark Rectification on Your Trademark
When it is proved that trademark was registered without any bonafide intention on the applicant’s part then the order can be made to remove that trademark from the registers and where the trademark has not been bonafidely used upto the date of three months before the application date and 5 years have passed after the registration.
Note: The time of five years is to be determined from the date on which the mark was put for registration for example the date on which the registration was requested to be made and not from the date of the application.
On receipt of the application, the Registrar serves notice to the applicant owner to record a counter explanation. When the counter explanation is framed the issue shows up at the proof stage where the applicant is required to record their particular proof about the trademark as an Affidavit. After this, there will be a consultation. In this way, the request is passed.
To protect your registered trademark from rectification or cancellation or removal you need to adopt necessary precaution for example the trademark renewal every once in a while, or to continue using the trademark and not keep it unused beyond the period of five years.
What are the Services offered by Arvisa With Respect to Trademark Rectification?
Our Services for Trademark Rectification:
- We have a team of expert who shall draft the Trademark rectification application.
- We have a lawyer, if required to appear in Court.
- Frame the legal agreement format and prepare set of all the legal documents required.
- Updates on developments and changes in the process of the application.
- Trademark rectification sample.
- Legal advisory and Compliance.
- Free consultation with the trademark expert of the Arvisa expert team by scheduling an appointment.
- Other related services like Trademark registration, GST registration, MSME registration, Company registration, Shop and establishment Act registration, financial services,etc.
Frequently Asked Questions
A standard practice done by the trademark candidate is that they record applications in all the 45 classes in spite of the fact that the mark is really utilized for one or two classes. This is named as defensive registration and the court has held in different cases that such registration ought not be supported.
Hence, if your trademark rectification has been recorded against you and it is established that no expectation of really utilizing the mark as for the items and administrations the imprint is available an appeal for retraction can be petitioned for removal of the mark from the trade register.
The national statues- the trademarks Act 1999 and rules made such as International multilateral convention, national bilateral treaty, regional treaty, decision of courts etc.
Any person aggrieved by the registration of a trademark can apply for rectification by showing the irregularities in the registration.
Any fraud carried out by the registrar, error in registration, non-payment of registration, false entry made, are the grounds for rectification.
The term trademark cancellation talks about the application which are petitioned for removal of any recently registered trademark (or service mark) from the register of trademarks.
Q6.Is it possible to file an application for rectification when there is suit for infringement is pending in the civil court?
The application can be made yet on the off chance that the suit is pending under the watchful eye of the civil court with respect to the legitimacy of trademark then the meeting must be directed by the IPAB and not the registrar.
Arvisa will take 5-10 days to prepare the trademark rectification deed and filing.
For filing new applications there are forms such as Form TM-1, TM-2, TM-3, TM-8 etc. at 4000 Rs. To file a notice of opposition Form TM-5- Fees is 2500Rs.