Learn everything about trademark rectification in India – grounds for cancellation, TM-O form, procedure, and legal tips. Stay compliant with Trademarks law.
In today’s competitive market, trademarks are vital business assets. They help build brand recognition and trust among consumers. But what happens when a trademark is wrongly registered, contains an error, or is no longer being used? That’s where trademark rectification comes in. In India, the Trade Marks Act, 1999 provides mechanisms to rectify or cancel such trademarks.
This blog provides a complete guide to trademark rectification in India – what it is, when it applies, who can file it, and the procedure involved.
What is Trademark Rectification?
Trademark rectification refers to the legal process of correcting or removing an error or an entry in the Register of Trademarks. It can be initiated by either the registered proprietor, any aggrieved party, or the Registrar of Trademarks suo motu.
In simple terms, if a trademark has been wrongly registered, or if any changes need to be made to the registered details (such as proprietor’s name, address, or specifications of goods/services), an application for rectification or cancellation can be filed under Sections 57 to 60 of the Trade Marks Act, 1999.
Grounds for Trademark Rectification in India
Here are the common grounds on which rectification or cancellation can be sought:
✅ Non-Use of Trademark
If the trademark has not been used for a continuous period of five years from the date of registration, it can be cancelled on grounds of non-use.
✅ Wrongfully Registered Trademark
If a trademark was registered based on misrepresentation, fraud, or if it conflicts with an already existing trademark.
✅ Contravention of Provisions
If the registration violates any conditions laid down under the Trade Marks Act, 1999.
✅ Mistake or Error in Entry
For example, clerical errors in the address, proprietor’s name, or goods/services description.
✅ Trademark Not Distinctive
If it lacks distinctiveness or has become generic, it may be struck off.
Who Can File for Trademark Rectification?
- Aggrieved Parties – Any person or entity whose interests are adversely affected by the wrongful registration.
- Registered Proprietor – To correct an error or update the register.
- Registrar of Trademarks – Can initiate rectification proceedings on their own (suo motu).
Where to File a Trademark Rectification in India?
The rectification application must be filed before the appropriate office of the Intellectual Property Appellate Board (IPAB). However, post the abolition of IPAB in April 2021, such applications are now adjudicated by the High Court having jurisdiction or before the Registrar of Trademarks, depending on the nature of the issue.
Procedure for Trademark Rectification
📌 Step 1: Filing TM-O Form
An application for rectification is made using Form TM-O along with the prescribed fee under the Trade Marks Rules, 2017.
📌 Step 2: Statement of Case
The applicant must clearly mention:
- Details of the trademark in question
- Grounds for rectification
- Supporting evidence and documents
📌 Step 3: Notice to Registered Proprietor
The Registrar will serve a notice to the trademark owner for their response.
📌 Step 4: Hearing and Evidence
Both parties may present arguments and supporting documents. The Registrar may also call for a hearing.
📌 Step 5: Final Order
After reviewing all submissions, the Registrar or High Court will pass an order for rectification or cancellation.
Documents Required for Trademark Rectification
- Copy of the registered trademark certificate (if available)
- Details and grounds of rectification
- Proof of usage (or non-usage) of the trademark
- Affidavit or supporting statements
- Power of attorney, if filed through an attorney or agent
Timeframe and Fees
- Timeframe: The process may take anywhere from 6 to 18 months, depending on the complexity and jurisdiction.
- Fees: As per Schedule of Fees under the Trade Marks Rules, 2017. Government fee for filing Form TM-O is ₹3,000 for individuals/startups/SMEs, and ₹6,000 for others.
Key Case Laws on Trademark Rectification
- Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd.
The Supreme Court emphasized the importance of bona fide use of a trademark to maintain registration. - Kamat Hotels (India) Ltd. v. Royal Orchid Hotels Ltd.
It highlighted that non-use and lack of distinctiveness are valid grounds for rectification.
Tips to Avoid Trademark Rectification
- Use your registered trademark regularly and in a consistent manner.
- Monitor the trademark register to oppose conflicting marks.
- Keep ownership and address details up to date.
- File affidavits of usage if required during renewals.
FAQs on Trademark Rectification
Q1. Can I file for rectification if a similar mark is wrongly registered?
Yes. If the registered mark affects your existing rights, you can apply for rectification.
Q2. What is the difference between rectification and opposition?
Opposition is filed before the mark is registered. Rectification is filed post-registration.
Q3. Can the Registrar cancel a trademark on its own?
Yes. Under certain conditions, the Registrar can act suo motu for rectification.
Concluding
Trademark rectification is a crucial safeguard in India’s trademark law framework. It ensures that the Register of Trademarks reflects only valid, legitimate, and currently used trademarks. Whether you’re a brand owner defending your rights or an aggrieved party seeking justice, understanding the rectification process empowers you to take informed legal action.
For professional assistance, consult a trademark lawyer who can guide you through the nuances of rectification and represent your case effectively before the Registrar or Court.
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This content is for general informational purposes only and does not constitute legal advice.