An Overview of Trademark Rectification
Trademark Rectification refers to the process through which an individual applies for removal of a registered Trademark from the Trademarks Register. In other words, Trademark Rectification is a valid procedure to modify or correct a mistake or error that has been made in the delicacies of a Trademark as recorded in the Register of Trademark after the Trademark Registration.
An individual can apply for Trademark Rectification or Trademark Cancellation on the grounds of failure to observe a situation of the Trademark already entered in the Trademark Register or an error in Trademark Registration. An application for Trademark Cancellation or Rectification can also be filed on the grounds of non-use Trademark for a given time after the Trademark Registration.
In India, Chapter VII of the Trade Mark Act of 1999 manages the right related to Rectification. Trademark Act 1999 (Section 57) states that any person bothered of such entry in the Register of Trademark can file an application for Rectification. But, Rectification doesn't work in every condition; in some cases, an error can lead to the cancellation of the Trademark Registration.
Who are Eligible to file for Trademark Rectification?
An owner can file the application of Rectification itself for removing the mistakes or errors.
It may also be filed by any other individual or company being aggrieved by such company.
Note: That persuading evidence is to be put together by the applicant, mostly on account of the removal of any registered Trademark of some other individual from the Trademark Register.
Grounds for filing a Trademark Rectification application in India
Section 57 of the Trademarks Act, 1999, provides for the grounds for Rectification of the Trademark Register, and you can check the same below:
- Clauses 1 & 2 of Section 57 of the Trademarks Act provides that when any individual aggrieved of any entry in the Trademarks Register makes an application to the Registrar, the Tribunal may take such steps for variation or cancellation of the Trademark Registration on the ground of any failure to observe a situation. The right to file the application for Trademark Rectification under Section 57 is a legal right converse upon a party who is aggrieved by an entry made in the Trademark Register. The understood right is limited by certain requirements;
- The fee for renewal has not been paid;
- Disobeying or failure to observe a situation entered in the Register regarding the Trademark Registration, Section 57(1);
- The Register suffers from the error or absence of an entry, for example, a disclaimer, a situation or a restriction on the registered mark (Section 57 (2));
- The entry made in the Trademark Register was made without any adequate case that is registration of Trademark was obtained by misrepresentation or fraud or the registered mark was similar to an already registered mark, etc. (Section 57 (2));
- Defect or omission in any entry made in the Trademark Register (Section 57 (2));
- The registered mark was wrongly remaining on the Registrar; it is opposing to some of the provision of the Act or is likely to cause confusion amongst the trade and public. The mark is in contravention of Section 9 and 11 of the Trademark Act (Section 57 (2));
- Clause (4) of Section 57 delivers that the Tribunal, i.e. the Registrar or the Appellate Board, after giving notice and an opportunity of being heard to the concerned parties, may either vary, cancel, remove or make the entry in question;
- In Section 31 (1) of the Trademark Act, the original registration of the Trademark will be prima facie proof of the mark's validity in all legal proceedings relating to a Trademark (consisting in an application under Section 57);
- An application for Trademark Rectification is required to be filed before the same Trademark Registry is specified under Rules 97 to 100 of the Trade Marks Rules, 2002. An application under Section 57 is to be made in duplicate on Form TM-O (in the case of a certification mark or collective mark). The application is to be accompanied by a statement of the case, setting out the interest of the applicant, facts upon which the case is based and the aid that is sought;
- Although the Trademarks Registrar is authorized to hear rectification petitions against registered marks, in the case where a Trademark Infringement suit is pending before a civil court and where the perpetrator in the suit is challenging the validity of the accuser's Trademark, the power to hear an application for Trademark Rectification vests only with IPAB and not with the Trademark Registrar.
How can you apply for the Rectification of a Trademark?
Following is the process for rectification application, and it is divided into three categories;
- Trademark Cancellation or Rectification started by the Trademark owner; apply in the TM-16 Form along with the prescribed fees;
- Cancellation or Rectification of a Trademark started by the Registrar; apply in the Form TM-M along with the fees;
- Cancellation or Rectification of a Trademark started by any individual- apply in the Form TM-26 along with the fees.
What is the Process of Trademark Rectification?
The detailed process of Trademark Cancellation or Rectification in case of owner started and the Registrar started remains the same. The following are the steps:
- Drafting of the Application
First, the applicant needs to fill in the relevant Form along with all the details.
- Filing of Application Form
After that, the applicant needs to file the Form with the Trademark Registrar along with the fees.
- Submission of Documents
After filing the application form for Rectification or cancellation, the Trademark owner should submit the application and the vital documents and modifications required (depending on the modifications required) for supporting the modification address or identity proofs.
- Approval of Government
The final step is approval by the Registrar and alteration in the Register as needed. When the cancellation or Rectification is started by an individual, then the process is: the individual must apply in the related Form as mentioned above along with the reason for Rectification and submit the same to the Trademark Registrar along with the fees. Then the Trademark Registrar will send a notice to the Trademark owner to file a counter statement. Both parties will have to file an affidavit producing their proof. The outcome of Rectification can be that after hearing the case offered by both parties, the Trademark Registrar or the Board can either add, vary, cancel or remove the entry. The Act and Rules of Trademark deliver relief to the applicant and aggrieved individual to search for cancellation or Rectification.
What are the Consequences of Trademark Rectification on your Trademark?
A registered Trademark can be requested to be removed from the Trademark Register in the event that it is established that the Trademark was registered with no factual blue aim and where there has been no honest utilization of the Trademark increase to a date three months prior to the date of use and five years have glided by after Trademark registration and still not put to utilize.
Note: The time of five years is to be determined from the date on which the mark was put on the Trademark Register, for instance, the date on which the enlistment was requested to be made and not from the application date. On application receipt, the Trademark Registrar serves notice to the enrolled proprietor to record a counter expression.
When the counter explanation is acknowledged, the issue shows up at the evidence stage. The parties may need to record their specific proof as an Affidavit. After this, there will be a discussion. In this ways, the request is passed.
To safeguard your registered Trademark from cancellation or Rectification, you need to accept essential precaution; for instance, the renewal of the Trademark every once in a while, not doing anything will destroy the distinct character of the mark or not allowed the mark to stay unused for a time exceeding five years.
Frequently Asked Questions
It refers to when the application is filed for removal of any registered Trademark from the Trademark Register.
If a logo meets the requirements for legal requirements as artwork, then it is copyright protected.
Any aggrieved person by the Trademark Registration can apply for Rectification by presenting the indiscretions in the registration.
The Trademark Act 1999 and Rules made such as a national bilateral treaty, international multilateral convention, courts decision, regional treaty, etc.
Yes, the application for Rectification or cancellation can be filed with the IPAB at Chennai. Once the pleadings are completed, a hearing is appointed before the IPAB.
Yes, the Trademark Act provides for Cancellation or Rectification proceedings.
For filing a new application, there are several Form such as TM-1 to TM-8, etc., at Rs. 4000/- to file an opposition notice Form TM-5 fees is Rs. 2500/-.
An applicant withdraws their application of Trademark by submitting a withdrawal letter to the Trademark Registry in writing.