Overview of Trademark Rectification
Trademark is part of the Intellectual Property Rights and Trademark Rectification is the part of Trademark Registration Procedure itself. For meeting the current situation and different aspects of it, a separate Trademark Act has been enacted. Trademark refers to a sign, mark, expression, or design which makes it identify particular goods or services and can make it distinguished from others. When cases arise as of some mistakes or errors in trademark or have been recorded wrongly in the register, then for such omission to be sought Trademark Rectification Process is there to help you out. The Indian Trademark Act states the provision for rectification for the cases mentioned above.
An aggrieved party can file a petition for Trademark Rectification. Also, he or she can file the petition for the cancellation of the trademark Registration which happened because of some mistake or an omission. They can also file a petition for the removal of the mark which is registered. Trademark Rectification applications can be filed before the Trademark Registry which has jurisdiction. Jurisdiction plays a very important role when it comes to Trademark Registration as well as Trademark Rectification. Mostly trademark Rectification is filed in that office of the trademark where the original application has been filed for the registration.
Rectification is done after hearing both the parties properly. Without hearing the parties one cannot rectify the trademark. Once the application for rectification has been filed, the applicant who filed the application will be given an opportunity of being heard. As per the argument of both the parties expel, drop or rectification of the respective trademark will happen.
What is Trademark Rectification?
Trademark Rectification refers to rectifying the errors or omissions made in the register after the registration of trademarks. A trademark may have been wrongly registered or even after getting expired that may be present in the register of trademark registration. Arising of such cases frequently requires rectification and thus the Indian Trademark Act provides provision for rectification of the registered trademarks. In the Trademark Act 1999, chapter 7 deals with rectification provisions. Under section 57, the Act states that any individual who is connected with the Trademark Registration or aggrieved by it can apply for Rectification. Though the provision for rectification is mentioned that does not support every situation, sometimes the rectification can lead to the cancellation of Trademark Registration also. Thus it must be done with caution.
Who can File an Application for Trademark Rectification?
The following persons can file for Trademark Rectification under the Trademark Act-
- Person Aggrieved
- Trademark Holder
- Third person
Any individual who is aggrieved by any means i.e. by way of similarity of the mark or the mark registered for malaise purpose can file for Trademark Rectification under the Trademark Act in any office whose jurisdiction it will come.
In a situation where the trademark holder finds himself the mistakes or omissions can record the same and file for rectification. It is not at all necessary that an aggrieved person can file for rectification under the trademark law.
Any third person or entity other than the trademark holder or aggrieved person can file for Trademark Rectification as of any misled occurrence with the mark or infringes the society or any part of society. It is not at all mandatory that only one who is aggrieved or who is a trademark holder can file for rectification. A third party can also file an application for rectification.
Grounds for Trademark Rectification
Given below are the grounds for the rectification of any trademark under the trademark laws-
- The specific error of an entry i.e. disclaimer, conditions, or confinement can be rectified by filing the Trademark Rectification application.
- When the trademark holder does not pay the renewal fee then in such a situation as well one can file an application for rectification.
- When the registration was acquired by misrepresentation of a previously registered mark, it can definitely deserve to be rectified.
- A Trademark Rectification application can be filed if the registration is obtained by fraud or distortion or misleading any fact that must be known or by any false statement could be removed from the trademark register.
- In a case where the mark represents wrongly and causes confusion in the market between the consumers or anyone who cause loss to the trademark holder can be rectified.
- The trademark must meet the conditions specified in section 9 and section 11 of the Trademark Act, 1999.
- In the registered trademark, inclusive or exclusive of certain new goods or services which is against the business scope or society.
- Any recent amendments or modifications in relation to the registered trademark can lead to rectification.
- When the previous trademark is not renewed then in such a situation rectification can be done.
- If one is not using the registered trademark for 5 years or more then a rectification application can be filed against it.
- To change details of the applicant or the address, which has been mentioned wrong or got changed then rectification can be done.
- Any other grounds prescribed by the registrar are duly accepted.
Forms for Trademark Rectification in India
Given below are the forms which have been used while filing Trademark Rectification-
- TM-16 Form shall be submitted by the trademark holder for rectification or cancellation with the prescribed fee.
- TM-M Formis filled by the trademark holder as of when the rectification or cancellation is initiated by the registrar himself and provides the prescribed fees.
- TM -26 Formshall be filled out when rectification or cancellation is initiated by any aggrieved person with prescribed fees.
Where the Rectification Application can be filled by the Applicant?
Trademark Rectification application can be filed before the Trademark Registry which has jurisdiction or the Appellate Board or the Tribunal which may give an order regarding the rectification. Jurisdiction plays a very important role when it comes to Trademark Registration as well as Trademark Rectification. Mostly Trademark Rectification application is filed in that office of the trademark where the original application has been filed for the registration. The five main offices related to the Trademark Jurisdiction are given below-
Precautions for Trademark Rectification
In the following ways, one can avoid Trademark Rectification-
- The use of the trademark must be in the continuation process and not keeping it unused for 5 years or more.
- The trademark holder shall take immediate legal action if any infringement is observed by the holder.
- Renewing the Trademark Registration on due time and in a prescribed manner.
- To protect the trademark in every possible way and not let it misleads anyone.
- Safeguarding the original character of the Trademark.
For filling the Trademark Rectification there are some important aspects to be taken care of, which are given below in detail-Professional Respond
The rectification notice shall respond to the rectification notice professionally. The replay shall be in such a way that chances for successful rectification shall be accepted and done accordingly. If one responded to the rectification notice casually, without giving any attention then there are high chances it got rejected.No Guarantee
The rectification of the trademark doesn’t guarantee its registration. However, an expert can put on his efforts into registration. Although there is no guarantee there is chance o registration. It is not a completely zero result situation.Time Duration
After filling for rectification, it is necessary to monitor the application status. Sometimes the applicant respond is asked for queries arising in his/her application. The answer to such queries is mandatory to get the best result. Thus it is required to follow up on the application.Trademark Journal
Trademark Journal is an official gazette of the trademark registry. When the trademark registry accepts the application then it is advertised in the trademark journal. As the trademark is advertised, any person who holds any interest or in the interest of society can oppose the registration.Trademark Opposition
As any new trademark gets registered the same is notified to others. The others then get a chance to file any opposition regarding the notified trademark but it shall be made within 6 months from the date of application.
Process for Trademark Rectification
The process for Trademark Rectification either from the proprietor or registrar initiated remains the same and the following are the steps for it-
- Drafting of the Application
- Form Filing
- Documents Submission
- Documents Verification
- Final Order
Firstly, the applicant needs to draft the rectification application with all the required information carefully. Your one mistake can result in the rejection of your application hence draft this application with care.
After drafting the application one must file the form with the Trademark Registrar with the prescribed fees. Without this step, one cannot file the application for the rectification of the respective trademark.
After filing the form the applicant is required to submit the required application to the registrar or IPAB in a proper manner and with the required documents of rectification to be done. Along with the documents, proof shall also be attested for alternations to be modified like identity proofs, address proof, or PAN.
After the submission of the documents now it’s time for the verification. All the documents submitted by the applicant must be verified during this step. If the verification is done and the concerned authorities are satisfied then we can move to the next step. but if verification is done and the concerned authorities are not satisfied then in this case application will be rejected.
Lastly, after hearing both the parties and rectifying the evidence, the Registrar or the Appellant Court passes an order as they deem fit i.e. either to rectify, add, vary, or substitute the trademark register.
Process for Rectification Initiated by an Aggrieved Person
When any aggrieved person initiates rectification following is the process to be followed-
Step-1:The aggrieved needs to file for rectification by the form TM–26 and mention the reasons for rectification with it then submit the same to the Registrar along with the prescribed fees.
Step-2:The Registrar will send the notice to the trademark holder for the same and ask to file a counter statement against the rectification filed by the aggrieved.
Step-3: Both parties have to file affidavits with their relevant evidence.
Step-4:After submission of the documents by both the parties, the Registrar or the Appellant Board verifies it and hears the parties accordingly. Later, at its discretion, the decision could be to rectify, add, remove or cancel the trademark.
Consequences of Trademark Rectification on Trademark
A registered trademark can be removed by an application filed by an aggrieved person although the due process and related evidence are taken into consideration before concluding any fact regarding the trademark. Any trademark which is not being used for 5 years or where the trademark registered has no honest utilization in the market for three years or above would be liable for removable from the Trademark Register. It is also observed as any trademark which is registered shall be used accordingly and maintains its image in the market. The absence of all the above-mentioned elements would result in the cancellation of the Trademark or elimination for a few years.
BizAdvisors Assistance in Trademark Rectification
- Purchase a Plan for Expert Assistance, so that they can assist you while filing the Trademark Rectification.
- Add Queries Regarding Trademark Rectification, for which the applicant wants to file the application.
- Provide Documents to BizAdvisors Expert, so that he or she can forward the process of the rectification.
- Prepare Application for the purpose of Trademark Rectification.
- Complete all Admissibility Criteria for Preliminary Screening related to the rectification which has been discussed above.
- Complete Procedural Actions by the BizAdvisors.
- Get your Trademark Rectification at your Door Step with the help or assistance of the BizAdvisors.
Why you should choose Bizadvisors?
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- BizAdvisors is one of the many platforms which coordinate to fulfill all your legal requirements.
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Every trademark is unique in itself as it specifies a different identity of goods or services provided by the owner. Trademark Registration creates a legal identity of the brand in the eye of law. Any error in the trademark or in its register shall be rectified duly on time and as soon as possible and the process of rectification is known as the Trademark Rectification process. The need for Trademark Rectification would not arise if one follows the precautionary steps towards it. Sometimes following the Trademark Rectification process may lead to the end or cancellation of the trademark registered. So it should be filed with due care. Thus the need for professionals arises here, the BizAdvisors team of experts can help you out with such a situation and guide you for further required steps. The BizAdvisors provides all the facilities from the Trademark Registration process to its renewal and objection filing. Feel free to contact BizAdvisors professionals for any query related to Trademark.
Frequently Asked Questions
An aggrieved person can apply for trademark rectification/ cancellation on the grounds of contravention or failure to observe a condition of the trademark already entered in the register or an error in registering the trademark.
Yes, a trademark can be amended by filing Form TM 38. The changes in it shall be accompanied by five copies of the edited trademark. If the changes are approved by the Registrar, then the Trademark Registration Certificate shall be provided with mentioned amendments in it.
Places, where Trademark rectification can be filed as per the jurisdiction, are given below-
Given below are the forms which have been used while filing Trademark Rectification-