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Rectification of Trademark

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Last Updated on July 17, 2023 by Kanakkupillai

Trademark Rectification

Rectification of trademark refers to correcting errors that may have occurred during trademark registration. This process can be initiated even after one year from entering the trademark registry. The aggrieved party, affected by the wrongful registration of a trademark, can apply for rectification. However, two conditions must be satisfied: Firstly, it must be shown that the trademark owner has not used the mark, and secondly, there should be proper evidence to support the claim. This article aims to provide an overview of the process of rectifying trademarks and offer guidance on how to protect the rights of the mark owner.

Grounds of Non-use by the Registered Owner

When trademark owners claim non-use of goods, they must provide clear evidence to the proper officer. There are several grounds on which non-use of a trademark can be established:

  1. Non-advertisement: The mark should not be advertised in any form, as advertising the mark is considered the use of the mark. During the advertisement process, the mark becomes visible to the public. Therefore, the owner cannot defend themselves by claiming they have not used the mark but only advertised it.
  2. No use in any form: The mark should not be used in any way. The court has clarified that the mark must remain unused to establish a non-use claim.
  3. The burden of proof: Generally, the burden of proving the non-use of the mark lies with the party applying for rectification of the trademark.

How to Prevent Trademark Rectification or Cancellation in India?

To prevent the rectification or cancellation of a trademark in India, the following steps can be taken:

  1. Renew the trademark regularly: Renewing the trademark is crucial for its protection against rectification, cancellation, or infringement. This renewal process should be completed within ten years by filing the TM-R 1 form and the prescribed fee.
  2. Preserve the mark’s distinctive character: Every trademark possesses a distinctive character that sets it apart from others. It is important to protect this distinctive character from being diluted or becoming descriptive. Regularly search for similar marks introduced by different companies using the trademark database to ensure the mark remains distinct.
  3. Maintain active use of the mark: Once registered, the owner should actively use the mark. Allowing the mark to remain unused for 5 years and inactive for more than 3 months from the date of registration may create conflicts and jeopardize the mark’s protection.

Decision-Making Process

Once the application for rectification is submitted to the registrar along with the prescribed fees, a copy of the application is sent to the proprietor of the mark, requesting them to file a statement supporting their application. The registrar examines the applications from both parties and makes a decision. If either party is dissatisfied with the registrar’s decision, they can appeal to the Intellectual Property Appellate Board (IPAB). However, due to the abolition of IPAB, the powers of IPAB have been transferred to high courts and commercial courts.

Conclusion

Rectification of trademarks is a crucial process that trademark owners should follow to rectify any errors encountered during the registration process. It is essential to adhere to the rules and regulations outlined in intellectual property law when filing for rectification. By taking necessary steps to prevent rectification or cancellation, trademark owners can safeguard their rights and protect the distinctiveness of their marks.

 

G.Durghasree B.A.B.L (Hons)

G Durghasree B.A.B.L (Hons) is a registered trademark attorney with extensive experience as an Advocate for a period of 8 years. She possesses expertise in trademark law, including trademark filing and trademark hearings. Additionally, she is skilled in contract drafting and reviewing, providing legal advice and opinions, particularly in the areas of Company Law, Insolvency and Bankruptcy Code (IBC), and Goods and Service Tax Law (GST). Her experience encompasses both litigation and non-litigation aspects of these laws.