Trademark Rectification

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A trademark is a distinct symbol or emblem that sets one product apart, akin to an individual’s unique birthmark. To establish the trademark’s uniqueness and exclusivity, it must be registered by the regulations outlined in the Trademark Act and Rules. When applying for a trademark or even after its registration, if the applicant discovers minor errors or deems alterations necessary, they can initiate a rectification of trademark process with the Registrar to address these issues. At IndiaFilings, we offer comprehensive Trademark Rectification services to guide clients through this vital aspect of trademark management.

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Trademark Rectification

Trademark Rectification involves correcting errors or omissions in the trademark register that occur after the initial registration of trademarks. This process addresses situations where a trademark may have been erroneously registered or remains in the register even after expiration. Such cases necessitate rectification, and the Indian Trademark Act contains provisions for this purpose. Chapter 7 of the Trademark Act of 1999 outlines these rectification provisions.

According to Section 57 of the Act, any individual associated with trademark registration or adversely affected has the right to seek rectification. It’s important to note that not all situations are eligible for rectification, and in some cases, rectification can result in the cancellation of the trademark registration. Therefore, this process should be approached with caution.

Reasons for trademark rectification

The reasons for rectification of trademark can be categorized as follows:

Errors in the Application Form: This includes instances of inaccuracies in the application form submitted for trademark registration, such as providing the wrong address or contact information.
Incorrect Information on Trademark Details: Rectification may be necessary when there are errors or inaccuracies in the information related to the trademark’s class, description, classification, or design.
Inaccurate Information at Registration: Situations may arise where the information provided during the initial registration of the trademark was incorrect, requiring rectification.
Updates to Application Information: Changes in application details, such as alterations to the applicant’s information or address, can also necessitate rectification.
Non-Use After Five Years and Three Months: Trademarks that have not been used for five years and three months may become eligible for removal from the trademark register.
Registrar-Approved Grounds: Any additional grounds for rectification that the Registrar has approved and prescribed as valid reasons for rectification.
Aggrieved Party’s Application: In cases where an aggrieved party applies for rectification or removal of a trademark, the Registrar may issue an order for rectification based on the application’s merits.

These various reasons highlight the need for trademark rectification, which aims to ensure the accuracy and integrity of trademark information by legal requirements and to address errors or discrepancies that may arise during the trademark registration process.

Who can File a Trademark Rectification Application?

The following individuals or entities can file an application for Trademark Rectification as per the Trademark Act:

Person Aggrieved

Any individual who feels aggrieved by factors such as the similarity of the mark or the registration of a mark for malicious purposes is eligible to initiate the process of rectification filed in trademark. This can be done at any office with the appropriate jurisdiction.

Trademark Holder

When the trademark holder identifies mistakes or omissions related to their own trademark, they have the right to address these issues and file for rectification. It’s important to note that an aggrieved person is not the only one permitted to file for rectification under trademark law.

Third Party

Any third-party individual or entity, distinct from the trademark holder or the aggrieved person, can also initiate the process of Trademark Rectification. This is applicable in cases where there has been a misunderstanding or where the use of a trademark infringes upon societal interests or a part of society. It’s essential to understand that entities can pursue rectification beyond just those who are directly affected or hold the trademark. A third party has the option to apply for rectification.

Forms for Rectification of Trademark

You can request rectification through three distinct application processes, depending on your circumstances:

Correction or Cancellation Requested by the Trademark Proprietor: If the trademark proprietor wishes to initiate rectification, they should submit the “TM-16” form, accompanied by the necessary payments and fees.
Rectification or Cancellation Initiated by the Registrar: When the registrar initiates rectification, the appropriate form to use is “TM-M,” along with the relevant fees as prescribed.
Rectification or Cancellation Initiated by Any Aggrieved Party: If an aggrieved party seeks rectification or cancellation of a trademark, they should complete the “TM-26” form and submit it along with the required fees.

These distinct application processes of rectification filed in trademark ensure that individuals or entities with different roles and interests in rectification of trademark can initiate the necessary procedures as per their specific circumstances and requirements.

Jurisdiction for Trademark Rectification Applications in India

The applicant can submit a Trademark Rectification application to the appropriate authority, which may include the Trademark Registry with jurisdiction, the Appellate Board, or the Tribunal, depending on the circumstances and where an order related to rectification may be issued. Jurisdiction is a critical factor in both Trademark Registration and Trademark Rectification processes.

Typically, a Trademark Rectification application is filed at the trademark office where the original registration application was initially submitted. The key offices associated with Trademark Jurisdiction include:

Mumbai
Chennai
Kolkata
Delhi
Ahmedabad

These offices are essential locations for handling matters related to Trademark Jurisdiction and are where applicants can file their Trademark Rectification applications as needed.

The Trademark Rectification Process

Whether initiated by the proprietor or the registrar, the process for rectification of trademark remains consistent and involves the following steps:

Drafting of the Application

The applicant begins by carefully drafting the rectification application, ensuring all necessary information is included. Precision in this step is crucial, as any errors can result in application rejection.

Form Filing

After drafting the application, it is essential to do the rectification filed in trademark using the requisite form with the Trademark Registrar, accompanied by the prescribed fees. This step is mandatory for initiating the rectification process.

Documents Submission

Following form submission, the applicant must provide the necessary documents for rectification, ensuring proper formatting and including proof, such as identity documents, address proof, or PAN details, where alterations are required.

Documents Verification

Once the documents are submitted, they undergo verification by the concerned authorities. If the verification is successful and satisfies the authorities, the process proceeds. However, if the verification is satisfactory, the application may be accepted.

Final Order

After hearing both parties and reviewing evidence, the Registrar or the Appellate Court issues an order following the verification process. This order can involve rectification, addition, variation, or substitution in the trademark register, as deemed appropriate.

Process for Rectification Initiated by an Aggrieved Person

When an aggrieved person initiates rectification, the process involves the following steps:

Filing for Rectification

The aggrieved individual files for rectification using Form TM–26, including reasons for rectification, and submits it to the Registrar along with the prescribed fees.

Notice to Trademark Holder

The Registrar sends a notice to the trademark holder, prompting them to file a counter statement in response to the rectification initiated by the aggrieved party.

Affidavits and Evidence

Both parties are required to submit affidavits along with relevant evidence.

Verification and Decision

The Registrar or the Appellate Board reviews the documents and hears both parties. The final decision may involve rectification, addition, removal, or cancellation of the trademark, based on their discretion.

Consequences of Trademark Rectification

Trademark rectification can result in removing a registered trademark, but this decision is reached through a thorough process that considers relevant evidence. A trademark that remains unused for five years or lacks genuine market utilization for three years or more becomes liable for removal from the Trademark Register. It is essential for a registered trademark to maintain its presence and reputation in the market. Please do so to avoid trademark cancellation or temporary removal.

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