Trademark Rectification

Trademark rectification is filed in India on grounds of dispute or failure to look at a condition of the trademark already entered within the Register or a mistake in registering the trademark. Section 57 of the Indian Trade Marks Act, 1999 provides for the grounds for Rectification of the Register:

1. Clause (4) of Section 57 provides that the court i.e. the Registrar or the appellant
   • Board, once giving a notice likewise as a chance of being heard to the involved parties, could either cancel, vary, create or take away the entry in question. Under Section 31(1) of the Act, the original registration of the trademark shall be primary proof of the validity of the mark altogether legal proceedings concerning a trademark (including in an application under section 57)
   • An application for rectification of a registered trademark is needed to be filed before a similar Trade Marks register wherever the application for its registration was filed. The procedure before the Registrar is prescribed according to the Rules 92 to 101 of the Trade Marks Rules, 2002. According to the section 57, in the case of a collective mark or a certification mark, an application is to be created in triplicate on form TM-26, or on TM-43. The appliance is to be in the course of a statement of the case, in triplicate, initiating the character of the applicant’s interest facts upon that the case relies, and therefore the relief that’s wanted.
   • Though, the Registrar of trademarks is authorized to listen to petitions for rectification against registered trademarks, in cases wherever an infringement suit is unfinished before a civil court and wherever the suspect in the suit is contesting the validity of the plaintiff’s trademark, the facility to listen to applications for rectification of such trademarks vests solely with IPA 8 and not with the Registrar.
2. Clauses (1) and (2) of Section 57 of the Act provides that once if any individual aggrieved of any entry within the Register of Trade Marks makes an application to the Board or to the Registrar, the court might take such steps for cancellation or variation of the registration of the trademark on the ground of any dispute or failure to look at a Condition. Filing an application for rectification under Section 57 could be a statutory right bestowed upon a celebration who is aggrieved by an entry created within the Register. The aforesaid right is circumscribed by certain bounded necessities such as:
   • Contravention or failure to look at a condition entered within the Register in reference to the registration of the mark (Section 57(1)).
   • The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered mark; (Section 57(2)).
   • The entry created within the Register was created with none adequate cause i.e. registration was obtained by fraud or false statement of facts or the mark registered was like an already registered mark, etc. (Section 57(2)).
   • Error or defect in any entry created within the Register (Section 57(2)).
   • The entered mark was incorrectly remaining on the Register i.e. it’s contrary to a number of the provisions of the Act or is probably going to cause confusion amongst the general public and trade; e.g. the mark is in dispute of Sections 9 and 11 of the Act (Section 57(2)).
   • The renewal fee has not been paid.

Precautions to be undertaken for the removal of a mark from the register:

• Not keeping the mark unused for a period surpassing 5 years.
• Take prompt action against or restrain others from infringing the involved mark.
• On time Renewal of the mark periodically.
• Preserving the distinctive character of the mark and avoiding its turning into deceptive.

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