If a trade mark has been registered and there is an error in the details of the trade mark, there is a provision of correcting that error legally. Sometimes, a trade mark does not get removed from the trade mark register even after it has expired, and sometimes it gets registered wrongfully, in these cases a request under Section 47 of the Trade Marks Act, 1999 may be filed before Tribunal (Registrar or Appellate Board), for rectification of register by removing the mark for non-use or under Section 57 or 58 for rectification or correction of register.
Who may file a rectification petition?
Any person may make an application before the Registrar of trademarks or before the Appellate Board for removal of a registered trademark or for cancelling or varying the registration of the trademark and for rectification of the register of trade marks.
Rectification of register may arise out of the following procedures under the Trade Marks Act, 1999:
- Under Section 47, a trade mark which is not used within 5 years of its registration becomes liable for removal either completely or in respect of those goods or services for which the trade mark has not been in use and any person can make an application for removal of a registered trade mark on this ground.
- Under Section 57 (1) and (2) a person aggrieved may make an application for cancellation or for varying the registration of a certification trade mark.
- Under Section 68 a person aggrieved may make an application for removing the registration of a collective trade mark
- Under Section 77 a person aggrieved may make an application for cancellation or for varying the registration of a certification trade mark.
- The Tribunal, on its own motion, after giving notice to the parties concerned and giving them an opportunity to be heard, makes an order for the rectification or cancellation.
- On application made in the prescribed manner by the registered proprietor, the Registrar of trademarks may correct any error in the name, address or description or any other entry relating to the trade mark; enter any change in the name, address or description of the registered proprietor; cancel the entry of a trade mark in the register; strike out any goods or services or classes of goods or services in respect of the registered trade mark and make consequential amendments or alterations in certificate of registration.
- Alteration of the registered trade mark by the registered proprietor (Section 59).
- Change of classification of goods to align with any revised classification (Section 60).
An application for removal of the registered trade mark or for cancelling or varying the registration of a trade mark and for rectification of the register of trademarks are made by the person aggrieved other than the registered proprietor. These matters are contested matters and the Tribunal deals with such matters.
Who is a person aggrieved?
Persons who are in some way or the other substantially interested in having the mark removed from the register or persons who would be substantially damaged if the mark remained are known as the persons aggrieved.
Rectification where the validity of registration is questioned
Where in a suit for infringement of a registered trade mark, the validity of the registration is questioned, the issue as to the validity of the registration of the trade mark concerned shall be determined only on application for the rectification of the register and such application shall be made to the Appellate Board and not to the Registrar.
Removal of registered trade mark for non-use under Section 47
The application for this purpose may be made on either of the following grounds:
- The trade mark was registered without any bona fide intention that it should be used in relation to those goods or services and that there has, in fact, been no bona fide use of the trade mark up to a date of 3 months before the date of application,
- A continuous period of 5 years from the date of registration or longer has elapsed during which there was no bona fide use thereof up to 3 months before the date of application.
Partial removal of a registered trade mark
Where in relation to any goods or services in respect of which a trade mark is registered and a person has been permitted to register an identical or nearly resembling trade mark in respect of those goods or services, on application by that person for removal of the other trade mark due to its non-use, the Tribunal may impose on the registration of the first mentioned trade mark, such limitations as it thinks fit.
Cancelling or varying the registration of a trade mark under Section 57
An application for cancelling or varying the registration of a trade mark may be made on the ground of:
- Any contravention or failure to observe the conditions entered on the register,
- Absence or omission from the register of any entry,
- Any entry made in the register without sufficient cause,
- Any entry wrongly remaining on the register,
- Any error or defect in any entry in the register.
Additional grounds for removal of registration of collective mark
The registration of a collective mark may also be removed from the register on the ground:
- That the manner in which the collective mark has been used by the proprietor or authorised user has caused it to become liable to mislead the public as a collective mark,
- That the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark.
Cancellation or varying of certification trade marks
On the application of any aggrieved person and after giving the registered proprietor an opportunity of opposing the application, an order for expunging or varying any entry in the register to a certification trade mark, or for varying the regulations may be passed, on any of the following grounds:
- That the proprietor is no longer competent in the case of any of the goods or services in respect of which the mark is registered to certify those goods or services,
- That the proprietor has failed to observe any provisions of the regulations to be observed on his part,
- That it is no longer for the public advantage that the mark should remain registered,
- That it is requisite for the public advantage that if the mark remains registered, the regulations should be varied.
Filing application for rectification of register
An application for the making or varying of any entry relating to a trade mark, a collective mark or a certification mark, in the register shall be made in triplicate and shall be accompanied by statement setting out fully the nature of the applicant’s interest, the facts upon which he bases his case and the relief which he seeks. Where the application is made by a person who is not the registered proprietor of the trade mark in question, the application and the statement aforesaid shall be submitted to the Trade Marks Registry in triplicate.
After the receipt of copy of application for rectification and within 2 months of such receipt, the registered proprietor shall send to the office of Trade Marks Registry, a counter-statement stating the grounds on which the application for rectification is contested and if he does so, the Tribunal Section of the Trade Marks Registry shall serve the copy of counter-statement to the person making the application within 1 month of the receipt of the same.
The Registrar of trademarks shall not rectify the register or remove the mark just because the registered proprietor has not filed a counter-statement, unless he is satisfied that the delay in filing is wilful and is not justified by the circumstance of the case.
The Hearing Officer hears the submissions of the parties and dispose of the notice by giving the grounds of his decision. It is then communicated to the parties concerned and the status of trademark is updated accordingly.