Trademark Rectification in India

Trademark rectification is the legal process of correcting or modifying entries in the Indian Trademark Registry. This ensures the accuracy and validity of registered trademarks. It's a crucial mechanism to address errors, omissions, or circumstances that make a registered trademark legally untenable.

Think of it as a clean-up operation for the trademark database, ensuring that only valid and rightful registrations remain.

Trademark rectification is vital for your brand because it ensures the integrity of your intellectual property.

Here's why trademark rectification is so important for your brand:

1. Corrects Errors and Inaccuracies:

• • Allows you to fix mistakes in your trademark registration, such as spelling errors, incorrect classification of goods/services, or wrong address details.
  • Ensures your trademark record accurately reflects your brand's true identity and scope of protection.

2. Maintains Brand Identity and Distinctiveness:

• • Prevents consumer confusion by ensuring your registered mark accurately represents your products or services.
  • Upholds the unique character of your brand, preventing dilution or misrepresentation in the market.

3. Strengthens Legal Protection and Enforceability:

• • A correct and clean trademark registration provides a robust legal basis for enforcing your rights against infringement.
  • Rectification solidifies your exclusive rights, making it easier to defend your brand in legal disputes.

4. Prevents Wrongful Registrations by Others:

• • Enables you to challenge and potentially remove trademarks that were wrongly registered, especially if they are identical or deceptively similar to yours.
  • Clears the trademark register of invalid entries, protecting your market space.

5. Avoids Trademark Cancellation:

• Addresses issues like non-use, errors, or a lack of distinctiveness that could lead to cancellation of trademark registration by third parties or the Registrar.
• Proactively resolves problems to preserve your valuable intellectual property.

6. Reflects Business Changes:

• • Allows you to update crucial details like changes in company name, address, or ownership (e.g., due to mergers or acquisitions).
  • Keeps your trademark registration current and compliant with your evolving business structure.

7. Ensures Compliance with Trademark Law:

• • Demonstrates your commitment to adhering to the provisions of the Trade Marks Act, 1999.
  • Mitigates the risk of legal penalties or adverse actions from the Trademark Registry.

Is Trademark Rectification the Same as Cancellation or Opposition?

While all three involve challenging a trademark, they serve different purposes.

When undertaking trademark rectification in India, understanding the specific forms involved is essential. These forms facilitate various aspects of the trademark lifecycle, including but not limited to rectification.

Here are the key forms relevant to trademark rectification and related processes:

Section 57 of the Trade Marks Act

Section 57 of the Trade Marks Act, 1999, is the core provision enabling rectification of trademark entries in India. Here are its key aspects in pointers:

1. Power to Cancel or Vary Registration: It empowers the High Court or the Registrar of Trademarks to cancel or vary the registration of a trademark.
2. Application by Aggrieved Person: Any "person aggrieved" can file a rectification application in the prescribed manner.
3. Grounds for Rectification (Sub-section 1): The High Court or Registrar can issue an order for cancellation or variation if there's:

• • Any contravention of the Act.
  • Failure to observe a condition entered on the register relating to the trademark's registration.

4. Further Grounds for Rectification (Sub-section 2): A "person aggrieved" can also apply if there's:

• • Absence or omission of any entry from the register.
  • Any entry made in the register without sufficient cause (e.g., wrongly registered).
  • Any entry wrongly remaining on the register (e.g., due to non-use, becoming generic).
  • Any error or defect in any entry in the register (e.g., clerical errors, incorrect details).

5. Registrar/High Court's Authority to Decide Questions: In any rectification proceeding, the High Court or Registrar can decide any question that is necessary or expedient for the rectification of the register.
6. Suo Motu Power (Registrar's Own Motion): The High Court or Registrar can initiate the trademark rectification process on their motion (suo motu). This happens after giving notice to the concerned parties and providing them an opportunity to be heard.
7. High Court Orders and Registrar's Duty: If the High Court orders rectification, it must direct that notice of such rectification be served upon the Registrar. The Registrar then rectifies the register accordingly upon receiving the notice.
8. Ensures Accuracy and Integrity: Overall, Section 57 is crucial for maintaining the accuracy, reliability, and integrity of the Trademark Register, protecting the rights of legitimate trademark owners, and promoting fair competition.

Anyone with a legitimate connection or interest can initiate the process of trademark rectification in India. This ensures the accuracy and purity of the Trademark Register.

In India, as per Section 57 of the Trade Marks Act, 1999, several parties can ask for a trademark to be rectified:

1. The Registered Proprietor (Owner) of the Trademark:

• If they identify any errors, omissions, or required changes in their registered trademark details (e.g., typos, incorrect class, change of address, or name).
• This is typically done to keep their registration accurate and up-to-date.

2. Any "Aggrieved Person":

• This is a broad category, referring to anyone whose interests are adversely affected by an entry (or omission) in the Trademark Register.
• Examples include:

• • A person who believes a registered trademark is identical or deceptively similar to their prior mark (registered or unregistered).
  • Someone whose trading interests are harmed by a wrongly registered mark.
  • A person who would be substantially damaged if the mark continues to exist on the register.
  • Someone who has applied for registration of a similar mark, and their application is pending.

3. A Third Party or Any Other Individual/Entity:

• This applies if a trademark misleads consumers, affects public interest, or causes confusion in the market.
• Such a party, even if not the owner or formally "aggrieved" in a business sense, can initiate rectification to ensure market clarity and fair trade practices.

4. The Registrar of Trademarks (on their motion):

• The Registrar can initiate rectification proceedings if they discover errors, omissions, or if a mark was wrongly entered or wrongly remains on the register.
• They typically issue a notice to the concerned parties and provide an opportunity to be heard before proceeding with rectification.

Trademark rectification in India allows for changes or removal of entries in the Trademark Register based on specific legal reasons.

Here are the key grounds on which a trademark can be rectified:

To file a successful application for the rectification of a trademark in India, you need to compile a comprehensive set of documents. These documents required for trademark rectification help in establishing your case and provide the necessary information to the Trademark Registry.

When applying for the rectification of a trademark in India, keep these key points in mind:

• Clear Grounds: Clearly state the specific grounds for the rectification of the trademark you are relying on.
• Strong Evidence: Gather and submit compelling evidence to support your claims.
• Timeliness: Act promptly. Delays can sometimes weaken your case.
• Legal Counsel: Consider engaging a trademark attorney. The procedure for the rectification of a trademark can be complex.
• Accuracy: Ensure all information in your application and documents is accurate and truthful.
• Jurisdiction: File your application with the correct Trademark Registry.

The procedure for rectification of trademarks in India is a structured legal process designed to ensure fairness and accuracy in the Trademark Register. Here are the steps involved, explained in simple terms:

Step 1: Drafting the Application and Statement of Case

• Initiation: The process begins when an aggrieved person, the trademark owner, or even the Registrar decides to initiate trademark rectification.
• Form TM-O: You must prepare an application for rectification of a trademark in India using Form TM-O. This form asks for essential details about the trademark you want to rectify and your grounds for doing so.
• Statement of Case (SoC): This is a crucial document that accompanies Form TM-O. It's a detailed written statement outlining:

• • Your interest in the matter (if you're an "aggrieved person").
  • The complete factual background of the case.
  • The specific grounds for rectification of a trademark you are relying upon (e.g., non-use, error, fraud, similarity).
  • The legal arguments supporting your request for rectification.
  • The specific relief you are seeking (e.g., correction of details, removal of the mark).

Step 2: Filing the Application with the Trademark Registry

• Submission: Once you've prepared Form TM-O and the Statement of Case, you file them with the appropriate Trademark Registry.
• Jurisdiction: The correct registry is typically the one where the original trademark application was filed or where the principal place of business of the applicant or respondent is located.
• Fees: A prescribed government fee must be paid along with the application.
• Mode of Filing: You can choose to file:

• • Online (E-Filing): This is generally faster and involves slightly lower government fees.
  • Offline (Physical Filing): You can submit physical copies at the registry office.

Step 3: The Registrar Sends a Notice to the Trademark Owner

• Notification: Once the rectification application is received, the Registrar of Trademarks will examine it. If it's in order, they will issue a formal notice to the registered proprietor (owner) of the trademark that is being challenged.
• Opportunity to Respond: This notice informs the trademark owner about the rectification proceedings and gives them a specific timeframe (usually two months) to file their response.

Step 4: Filing the Counter-Statement to Defend Your Trademark

• Response from Owner: The registered trademark owner, upon receiving the Registrar's notice, must prepare and file a Counter-Statement.
• Timeline: The Counter-Statement must be filed within the stipulated timeframe, failing which the rectification application might proceed without their defense.
• Rebuttal: This document is their official reply, where they:

• • Address the allegations made in the rectification application paragraph by paragraph.
  • Provide their version of the facts.
  • Present legal arguments and reasons why the trademark should remain on the register as is or why the requested rectification is unwarranted.

Step 5: Submitting Evidence and Affidavits from Both Sides

• Evidentiary Stage: This is a critical stage where both parties (the applicant for rectification and the registered owner) submit evidence to support their claims.
• Form of Evidence: Evidence is typically submitted in the form of affidavits. An affidavit is a sworn statement of facts.
• Exchange of Evidence: Both sides get an opportunity to review and respond to the evidence submitted by the other party.
• Supporting Documents: Along with affidavits, parties can submit various documents as exhibits, such as:

• • Usage proofs (invoices, advertisements, sales figures).
  • Market survey reports.
  • Prior registration certificates.
  • Documents proving fraud or misrepresentation.

Step 6: The Hearing Process

• Scheduling: After the exchange of evidence, the Registrar of Trademarks (or the High Court, if the matter is before them) will schedule a hearing.
• Arguments: During the hearing, both parties, usually represented by their legal counsel, present their oral arguments, elaborate on their evidence, and respond to questions from the hearing officer.
• Clarification: This stage allows for clarification of facts and legal points, helping the decision-making authority understand the nuances of the case.

Step 7: The Final Order and Its Impact on the Register

• Decision: Based on the application, counter-statement, evidence, and oral arguments, the Registrar or the High Court will pass a final order.
• Effect of Rectification: The effect of rectification of a trademark is immediately implemented in the Trademark Register. This ensures that the register reflects the legal status of the trademark, impacting its validity and the rights associated with it. This final step concludes the procedure for the rectification of the trademark.
• Possible Outcomes: The order can:

• • Allow Rectification: Direct the correction of entries, amendment of details, or even the complete removal of the trademark from the register.
  • Dismiss Rectification: Reject the application for rectification of a trademark in India, meaning the trademark remains as is on the register.

You have two main avenues for applying for the rectification of a trademark in India: through the online e-filing portal or via traditional physical filing. Each method has its own set of advantages and considerations for the procedure for the rectification of a trademark.

Online Filing (E-Filing)

1. Convenience and Accessibility:

• • 24/7 Access: You can file your rectification application anytime, anywhere, as long as you have an internet connection. This offers significant flexibility.
  • No Physical Visit: You don't need to visit a Trademark Registry office, saving travel time and costs.

2. Faster Processing:

• • Direct Submission: E-filing typically leads to quicker processing of your application as it directly enters the electronic system of the Trademark Registry.
  • Real-time Updates: The online portal often allows you to track the real-time status of your application, providing transparency in the procedure for rectification of the trademark.

3. Lower Fees: The government incentivizes online filing, so the official fees for e-filing are generally lower compared to physical filing (e.g., Rs. 2,700 for TM-O online vs. Rs. 3,000 offline).
4. Reduced Paperwork: All documents required for trademark rectification (like the Statement of Case and affidavits) are uploaded digitally, reducing the need for printing and physical handling.
5. Digital Signature Requirement: You'll need a valid Digital Signature Certificate (DSC) to sign the application electronically. This ensures authenticity and security.
6. Official Portal: The e-filing is done through the official website of the Office of the Controller General of Patents, Designs & Trademarks (ipindia.gov.in).

Offline Filing (Physical Filing)

1. Traditional Method: This is the conventional way of filing, involving paper documents and in-person submission.
2. Physical Submission:

• • Registry Visit: You must physically visit one of the five Trademark Registry offices in India (Mumbai, Delhi, Kolkata, Chennai, or Ahmedabad) to submit your documents.
  • Delivery: Documents are submitted at the designated counter at the registry office.

3. Higher Fees: As mentioned, the government fees for physical filing are slightly higher than for e-filing.
4. Slower Processing:

• • Manual Handling: Physical applications typically take longer to process as they involve manual scanning and data entry before entering the electronic system.
  • Delayed Updates: Tracking the status might be less immediate compared to online filing.

5. Proof of Submission: You will receive a physical acknowledgment receipt upon submission of your application, serving as proof of filing.
6. Accessibility for Some: This method is suitable for those who may not have reliable internet access or a Digital Signature Certificate.

The cost of trademark rectification in India isn't a fixed amount and can vary based on a few factors. It primarily involves government fees and, if you hire a professional, their service charges.

1. Government Fees (Official Fees for Filing TM-O)

• This is the mandatory fee paid to the Trademark Registry for applying for rectification of a trademark in India (Form TM-O).
• Online Filing (E-Filing): Rs. 2,700
• Offline Filing (Physical Filing): Rs. 3,000
• Note: This fee is per application for rectification, not per error or change.

2. Professional Fees (Legal/Consultancy Charges)

• Many individuals and businesses choose to engage trademark attorneys, legal firms, or online service providers to handle the procedure for rectification of a trademark due to its legal complexities.
• Typical Range: While highly variable, professional fees for a standard rectification of trademark can typically range anywhere from Rs. 3,000 to Rs. 15,000 or more, excluding government fees, for the basic filing and drafting services. Complex cases, especially those involving hearings and extensive evidence, could incur higher legal costs.
• Varying Costs: These professional fees can vary significantly based on:

• • Complexity of the Case: A straightforward clerical error rectification might cost less than a complex case involving non-use or fraud.
  • Experience of the Professional: Highly experienced attorneys may charge more.
  • Scope of Service: Some services might include only filing, while others offer end-to-end support, including drafting the Statement of Case, preparing evidence, attending hearings, and responding to counter-statements.
  • Market Rates: Fees can range from a few thousand rupees to significantly higher amounts depending on the depth of service and the lawyer's standing.

3. Additional Potential Costs:

• Evidence Collection: If you need to conduct market surveys, obtain specific documents, or hire investigators to gather evidence for your grounds for rectification of trademark (especially for non-use or deceptive marks), these would be additional expenses.
• Hearing Fees: While there might not be a direct government fee for attending a hearing, your legal representative will charge for their appearance and arguments during the hearing process.
• Miscellaneous: Costs for notarization of affidavits, courier charges, etc.

After a trademark rectification application is filed, the process moves into a more interactive and often contentious phase, where both sides present their arguments and evidence. This procedure for the rectification of trademarks ensures a fair hearing and a well-reasoned decision by the Registrar.

1. Acknowledgment of Application: After filing the TM-O form and required documents, the Trademark Registry issues an acknowledgment confirming receipt of the rectification application.
2. Examination by the Registrar: The Registrar of Trademarks examines whether the application is valid, complete, and within legal grounds for rectification or cancellation.
3. Notice to the Registered Proprietor: If the application is accepted, the Registry sends a legal notice to the current trademark holder (registered proprietor), inviting their response within a specified timeframe (usually 30 days).
4. Filing of Counter-Statement: The registered proprietor may file a counter-statement defending the registration. If no reply is received, the Registrar may proceed ex parte (without their input).
5. Submission of Evidence: Both parties are required to file their evidence in support of their claims. This includes affidavits, documents, usage records, non-use proof, etc.
6. Hearing by the Registrar: The Registrar may call for a hearing, where both parties or their attorneys can present oral arguments. This step is crucial in high-stakes rectification cases.
7. Final Order: After reviewing all submissions and hearing both parties, the Registrar issues a final decision, either rectifying (amending/removing) the trademark or rejecting the application.
8. Appeal (if needed): If either party is dissatisfied with the decision, they can appeal before the Intellectual Property Appellate Board (IPAB) or the relevant High Court.

Preventing trademark rectification is crucial for maintaining the strength and validity of your brand's intellectual property. It's about proactive management and diligent adherence to trademark law principles.

1. Continuous and Bona Fide Use

• Core Requirement: One of the most significant grounds for rectification of a trademark is non-use. A registered trademark in India can be removed if not used for five years and three months from its registration date.
• Strategic Use: Even if you registered your trademark on a "proposed to be used" basis, it's vital to commence use as soon as possible and maintain it consistently.
• Avoiding Hoarding: This principle prevents individuals or entities from registering trademarks merely to block competitors without any actual intention to use them.
• What is Bona Fide Use: This refers to honest, genuine commercial use of the trademark in the course of trade. It's not about token use to avoid cancellation. Evidence of bona fide use includes:

• • Invoices, sales figures, and purchase orders show actual transactions.
  • Advertising and promotional materials (brochures, website, social media, print ads) where the trademark is prominently displayed.
  • Marketing campaigns, packaging, and labeling bearing the trademark.
  • Presence of the goods/services with the trademark in the relevant market.

2. Trademark Renewal

• Timely Renewal: A trademark registration in India is valid for 10 years from the date of its application. After this period, it must be renewed to maintain its legal validity and protection.
• Consequences of Non-Renewal: Failing to renew your trademark within the prescribed period can lead to its removal from the register. Once removed, you lose all exclusive rights associated with the trademark, making it vulnerable to use by others and potentially leading to significant rebranding costs.
• Grace Period: The Trademarks Act provides a grace period (typically six months after the expiry date) during which the trademark can still be renewed, usually with a late fee. However, it's always best to renew well in advance to avoid complications.
• Maintaining Records: Keep meticulous records of renewal notices and payments.

3. Prompt Action Against Infringement

• Monitor Your Mark: Regularly monitor the market and the Trademark Journal for any unauthorized use of your trademark or applications for similar marks by third parties.
• Enforce Your Rights: If you discover any infringement or opposition to your mark, take prompt legal action. This includes sending cease and desist letters, filing opposition proceedings, or initiating infringement suits.
• Prevents Dilution: Consistent enforcement of your rights prevents the dilution of your trademark's distinctiveness and its value. Widespread unauthorized use can weaken your claim and lead to rectification for becoming generic.
• Active Defense: Being proactive in defending your trademark demonstrates your continuous ownership and intent to protect your brand, which can be crucial evidence if your mark is ever challenged for rectification.

The Trademark Rectification Certificate is the official document issued once your rectification request is approved by the Trademark Registry.

This certificate confirms corrected trademark details like owner name, address, class, or goods/services, ensuring the mark stays accurate and legally valid. It includes:

• Verified proprietor name and address.
• Corrected details of the trademark application.
• Class and specification after rectification.
• Rectification order reference and date of approval.
• Name and seal of the Registrar of Trademarks.

How to Download a Trademark Rectification Certificate?

To download your certificate, follow these steps:

1. Visit the official Trademarks Registry website.
2. Click on the "Trademark Application / Registered Mark" option.
3. Select the "National/IRDI Number" option.
4. Enter your trademark application/registration number and the captcha code, then click "View."
5. Click on the displayed trademark number.
6. Look for and select the "View Registration Certificate" option.
7. If an updated certificate is available with the rectified details, it will open as a PDF that you can then download.

How to Check the Status of the Trademark Rectification Certificate Online?

Step 1: Visit the Official IP India Website: Go to the official website of the Office of the Controller General of Patents, Designs & Trademarks (CGPDTM).

Step 2: Navigate to the "Trademarks" Section: On the homepage, look for and click on the "Trademarks" tab or section.

Step 3: Choose "Public Search" or "Trademark Application/Registered Mark"

• Under the "Trademarks" section, you'll find options like "Public Search" or "Trademark Application / Registered Mark" (usually under "e-Gateways" or "Related Links"). Click on either of these.
• If you choose "Public Search," you'll be directed to a search interface. If you choose "Trademark Application / Registered Mark," you'll directly get the input fields.

Step 4: Select Search Type (National/IRDI Number)

• On the left-hand panel, select the option "Trademark Application/Registered Mark."
• Then, from the dropdown, choose "National IRDI Number." This is the most common and effective way to search using your application or registration number.

Step 5: Enter Your Application/Registration Details

• In the provided field, enter the Trademark Application Number or the Registered Trademark Number of the mark for which the rectification application was filed.
• Carefully enter the Captcha code displayed on the screen.

Step 6: Click "View" or "Search": After entering the details, click on the "View" or "Search" button.

Step 7: Interpret the Status and Details Displayed

• The system will display the current status and detailed information about the trademark. You need to look for specific indicators that the rectification process is underway or completed:
  • "Rectification Filed": This status indicates that an application for rectification of a trademark in India has been formally filed against the particular trademark. This is a common status you'll see if you're the applicant for rectification or if someone has filed against your mark.
  • "Rectification Proceedings": You might see notes or status updates indicating ongoing rectification proceedings.
  • "Under Hearing" / "Show Cause Hearing": If the rectification has progressed to the hearing stage, the status might reflect this.
  • Updated Details: If the rectification has been successful and details have been changed, these new details will appear in the "Basic Details" or relevant sections of the trademark's record.
  • "Removed": If the rectification resulted in the complete removal of the trademark from the register (e.g., due to non-use), the status will change to "Removed."
  • "Registered": If the rectification application was dismissed and the trademark remains registered, its status will continue to show "Registered."
  • Document History: The public search often provides a "Document History" or "Correspondence" section. Here, you might find entries related to the filing of the rectification application, counter-statements, or orders passed.