Is It Possible To Modify A Registered Trademark in India?

As we know, the process of Trademark Registration plays a significant role in building a brand and protecting the same from imitation. However, in the case of errors and omissions, there is a need for the applicant to modify a registered trademark.

Further, the provisions related to the modification of a registered trademark are covered under the Trade Marks Act 1999.  Also, it shall be relevant to note that Modification of Trademark is possible both at the time of registration and post-registration.

In this blog, we will discuss the concept and procedure to modify a Registered Trademark in India.

Concept of Rectification

The term “Rectification” denotes a legal procedure that is followed for correcting or rectifying any act of error or omission made in the details and information recorded in the Trademark Register, after obtaining a Trademark registration.

Also, a mark that has been remained on the register after its expiry or has been wrongly registered are covered under the ambit of Trademark Rectification as well.

Who is Eligible to File Petition to Modify a Registered Trademark?

The aggrieved party is eligible to file a petition for rectification or cancellation of the Trademark Registration or for the removal of the registered trademark.

Regulatory Authority to Modify a Registered Trademark

As per the Trademarks Act 1999^[1], an applicant needs to apply with the Registrar for filing the application for modification or alteration.

Place to File Petition for Trademark Rectification

For the process of Trademark Cancellation or Trademark Rectification, the applicant needs to file the petition before Trademark Registry (having jurisdiction in Kolkata, New Delhi, Chennai, Ahmedabad, and Mumbai), where the application for registration was originally filed.

Grounds for Rectification or Cancellation

The Grounds for the Rectification or Cancellation of Trademark are as follows:

1. When the registration was granted without sufficient cause.
2. When the registration of the trademark was acquired by misrepresentation of facts.
3. When there is already a registered trademark.
4. If the mark has wrongly remained on the Trademark Register.
5. If the same is causing some confusion or is against the legal provisions of the Trademarks Act.
6. When there is a need to make some amendments, changes, or modifications as per the recent advancement in an already registered trademark.
7. If the registered trademark is not used for more than 5 years by the trademark holder.
8. In case of the non-renewal of the previous or original trademark registration.
9. In case of fraud or where the registration is obtained due to suppression of facts, false statements, a registered trademark is removed from the Trademark Register.
10. Addition or Inclusion of classes of trademark if in case the same is against the extent if a registered trademark.
11. Non-conformity with the grounds mentioned under section 9 and 11 of the Trademarks Act 1999.

Pre-Registration Modification

Before obtaining Trademark Registration, an applicant can submit the request for amendment or correction in the application by filing Form TM- M, together with the supporting documents and prescribed fee.

The main aim behind the process of modification is to correct the clerical errors in data entry, minor technical amendments, and mistakes in filing. However, it shall be relevant to note that an applicant cannot file rectification petition if in case there is a substantial change in the specification of goods or services, proprietor details.

When can Modification of Trademark be allowed?

The situations that permit modification of a trademark must result in the outcomes as follows:

1. Amendment does not change the use.
2. Usage date is not altered.
3. The amendment must not change the details concerning goods or services.

Further, the term “Permitted Modification” includes the following:

1. Change in Applicant’s Address.
2. Confinement or Deletion of any Item in the Specification of Goods or Services.
3. Limitation or Confinement in the Sales of Goods or Services.
4. Division of Multiclass Application.

When can an Applicant not Modify a Registered Trademark?

The non-permitted situations in which an applicant is not allowed to modify a Registered Trademark are as follows:

1. Change of Logo, Mark, and Color Specification.
2. Change in User Date.
3. Change in Trademark Type.
4. Change in Trademark Class.
5. Change in Trademark Description.

Who can Initiate Pre-Registration Modification?

The ones who are eligible to modify a Registered Trademark are as follows:

Applicant

An applicant can modify a registered trademark in the situation wherein he/she wants to correct or clarify an error made while filing.

Registry

The Registry has the right to send back the application filed for modification if in case any error or omission is detected. Further, such an application are marked as “Formalities Check Fail” by the authorities.

Further, the registrar needs to record the reasons as to why the application for modification is not accepted. After that, the applicant requires to rectify the errors and re-submit the same with Registrar.

Also, Read: What is the Trademark Assignment in India?

Post-Registration Modification

After the Registration of Trademark, a different set of provisions and regulations govern the process of alteration. In this case, the proprietor requires to file Form TM- P with the authorities, together with the modified/ amended trademark showcasing how it will appear after modification.

Who can Initiate Post-Registration Modification?

The one who is eligible to modify a Registered Trademark is as follows:

Applicant

An applicant can modify a registered trademark in the situation wherein he/she wants to correct or clarify an error made while filing.

Further, the term situation denotes the following:

1. Change in the Place of Business
2. Change in the name of the Company
3. At the Registrar’s discretion

When to Modify a Registered Trademark as per Trademark Rules 2017

The situations in which an applicant can modify a Registered Trademark as per the Trademark Rules 2017 are as follows:

1. Any change regarding the making, erasing, or varying of any entry concerning trademark or collective trademark will be submitted in form TM- O.
2. Besides this form, there will a declaration regarding the reasons for making changes in the facts of the case.
3. In case the person filing the application for Trademark Modification is not the registered user of the Trademark, then he/she needs to furnish the application to the Trademark Registry.
4. When the application is forwarded first to the registered users within 1 month of the Trademark to acquire their consent. The registrar will wait for the next month, in case of any other query.
5. If in case the registrar does not receive any counter-attacks within 3 months of the service, then the process of alteration will be done as per section 98 of the Trademarks Rule 2017.
6. In case of any query, the original applicant will need to answer within one month of the service to the said user that how he/she will defend the alteration and its requirement.
7. After satisfying all the queries, the process of alteration will be complete.
8. In case there is any change in the address of the registered office of the business, then the applicant requires to file Form TM- P with the registrar.
9. After filing the application in Form TM- P, the registrar will then publish the said application in the journal for public view;
10. If in case no query has been raised, then the same will be resolved prior to the final alteration sanctioned by the registrar.

Conclusion

In a nutshell, the process of Trademark Modification acts as an additional burden on both the applicant and trademark registry.

Also, it shall be relevant to state that the same can delay the process of trademark registration, as it will be an addition in the actual processing period for the registration. Therefore, the applicant must file the application for Trademark Registration with the utmost care in order to minimize the chances of any errors during the filing of the application.

Further, to avoid the process of trademark modification or cancellation or the removal of a registered trademark from the Trademark Register, the applicant needs to undertake proper precautions will be filing the application and when it is renewed.

That means it is necessary for every applicant to take necessary measures to secure a distinctive character of the trademark and should not abandon the mark. For any other detail, reach out to Swarit Advisors.

Also, Read: Complete Checklist For Registering a Trademark in India