Rectification of Trademark or its Removal by the Registrar of Trademarks

Overview : The blog provides an in-depth understanding of the process of filing for the rectification or removal of a registered trademark with the Registrar of Trademarks in India. It discusses the grounds for removal and the rectification of registered trademarks. The blog aims to educate readers on effectively protecting their brand and rights under the Trademark Act of 1999.

The trademark registration process has safeguards such as examination by the examiners where the similarity with the existing trademarks are checked in addition to the eligibility check in terms of the Trademark Act, 1999. However, there are situations when a trademark gets registered, and you may find that a particular trademark infringes upon your mark and wish to get the wrongly registered trademark removed from the records of the Registrar of Trademarks.

1. Examination of trademark application

The examiner of the trademark registry examines each application filed with the trademark registry to ensure that it complies with the provisions of the Trademark Act 1999 (the Act ) and, if registered, will not constitute infringement of the existing trademark. The registrar may refuse to register the applied mark if it is not in compliance with the provisions of the Act.

2. Deciding an opposition filed to an accepted mark

When a trademark is accepted at the stage of examination or show cause hearing by the registrar and gets published in the Trademark Journal, any person aggrieved with the proposed registration of the trademark can file opposition to the registration of such a published trademark.

The registrar of the trade mark may appoint hearing officers to hear and decide an opposition based on the evidence produced and arguments made before him. Such hearing officers have the power to allow or deny the application for registration.

3. Removal of the registered trademark

Section 47 of the Act provides a mechanism allowing the removal or imposition of limitation on the ground of non-use or while protecting those not used due to legitimate circumstances. It aims to prevent trademark hoarding. A registered trademark can be removed on the following grounds:

Non Uses for a continuous period of five years: If a trademark is registered and not used for a continuous period of 5 years starting from the date of grant of registration. The assessment of this continuous non-use is made up to three months from the date of application for removal of such trademark.

Exception to Non-Use Provision : As stated above, section 47 of the act also protects trademarks that are not put to use for legitimate reasons. The situations under which such protection against the removal of the mark due to non-uses is allowed are as follows:

Legal Restriction: Non-use due to legal restrictions or special trade circumstances may protect the trademark from removal.
Good Faith: If the registered trademark has been used in good faith for similar or associated goods or services but not for specific goods or services for which it was registered.
Regional Use: If the non-use of the registered mark relates to a specific region or market, there is a provision to limit the original trademark’s registration, excluding those regions or markets instead of removing it.

No bonafide intention to use and no actual use : If a trademark was registered without a bonafide intention to use and there is no actual use up to three months before the date of applying for removal of the mark.

4. Rectification of registered trademark

Section 57 of that trademark provides for the rectification of the record of the Registrar of Trademarks related to omission, errors, changes or improper registration or registration obtained fraudulently by the registered proprietor. The rectification can be filed under the following situations:

Alteration of the mark: The trademark owner may apply for the alteration of the mark, provided that the change does not substantially affect the mark’s identity. It is explained through an example as under:Example: If a registered proprietor wants to slightly modify the font style or change the shade of colour in its registered logo, it can apply for an alteration under Section 57. As long as the changes do not substantially affect the trademark’s identity, the alteration may be allowed without requiring a new trademark application.
Correction of errors:Section 57 also allows for corrections of clerical errors or other mistakes in the register. If an error or omission has occurred in the trademark registration details, such as a clerical mistake in the proprietor’s name, an incorrect address, or a typographical error in the description of the goods or services, these can be corrected by filing an application under section 57 of the Trademark Act.
Cancellation or variation in the registered trademark:

An applicant deliberately submits forged documents or falsified information about the usage of the trademark and obtains the registration or
A company providing accounting services applies for chemical products with no legitimate interest or intention to use the trademark for said chemical goods in commerce.

Conclusion

The above provision of refusal, removal, and rectification ensures that only marks that are compliant with the Act, procured without fraud, misrepresentation, or any other irregularity, and are in active use should remain in the Register of Trademarks, thereby maintaining the purity of the register. We at Setindiabiz will help you understand your trademark claim, enabling you to make a better decision about enforcing your proprietary rights in your trademark.