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When and How to Amend a Registered Trademark?

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Last Updated on May 29, 2024 by Swetha LLM

One of the most important steps in building and protecting a brand in India is trademark registration. Anybody claiming to be the owner of a trademark that they use or plan to use can register their trademark with the Registrar by submitting a written application in the proper format. Occasionally, a few changes must be made to a brand registration application.

Moreover, there are specific forms, clauses, etc. to change the information that was provided in the application. Changes to a trademark may also be made after or before it has been registered.

What is a Trademark?

In India, trademarks are governed by the Trademarks Act of 1999. A symbol, mark, or emblem that distinguishes the products of one producer from those of another is called a trademark. It might also be referring to the shape, the alphabet, the design of packaging, or any combination of these.

A trademark must be registered in order to keep other producers from stealing it. It may have a negative effect on sales and the company’s reputation.

Trademark Symbol

The user can only use R near its logo or design after the registration process is completed. Here are a few circumstances of trademarks:

™ – An unregistered trademark.

® – The trademark that is registered with the government.

℠ – A trademark for unregistered services.

Who has the Power to Modify Trademarks?

The Controller-General of Patents Filings, Designs & Trademarks is the Trademark Registrar as specified by the Trademarks Act. The person who feels wronged has to make a request to the Registrar to make amends to the application.

When can a registered Trademark be amended?

When there has not been a major change to a registered trademark’s identity, it can only be changed.

Permitted Alterations of a Registered Trademark

Section 59, which establishes the following requirements, allows trademark modifications for trademark amendment.

  1. The ministry will not approve the change if the public needs to search for the trademark again.
  2. If the company wants to change its name, that is acceptable.
  3. It’s acceptable If the business’s address needs to be changed
  4. If a new license has been acquired or abandoned,
  5. It is allowed if there is a change in the control and usage; it usually happens in cases where there is a collective trademark.

The changes that cannot be made are as follows.

  1. Any alteration that modifies the registered trademark’s main features. It is not possible to change the complete trademark.
  2. Any changes to the class of products or services under which the trademark is registered.

In order to invite any prospective opponents of the modified mark, the Registrar may continue to publicize the updated mark. Under Section 59, advertising is a necessary step that must be taken either before to or following the adoption of the modification. If approved, the changes have no impact on the duration of the trademark’s validity. It does not consider the mark to be renewed.

In the case that the changes pertain to changing the address of the main office as mandated by Section 58 of the Act, Form TM-P must be used, and Rules 91, 96, and 97 will be relevant.

Modification to the Registration Certificate

Regarding minor mistakes in the registration certification: A copy of the registration certificate can be sent with the relevant form for revision. A new certificate of registration would be issued to the applicant or their designated agent after it was repaired.

Regarding major errors on the registration certificate: The improper products classification and incorrect mark publishing and services, etc., are a few examples of serious errors in the registration certificate. In such a case, the Tribunal will open a hearing pursuant to Section 57(4) of the Act.

Amendment of a Registered Trademark

You may still submit an alteration that doesn’t radically alter the TM’s identity after you’ve received your certificate of registration. If necessary, the Registrar may publicize the modified TM in such a case. The Registrar will consider when determining whether to permit a change to your mark if an opposition is filed within the allotted period.

An overview of the forms you may require to file to change a trademark:

  • Form TM 33: Minor alterations to the registered proprietor’s name or description
  • Form TM 23/24: Replacing the mark owner’s name completely.
  • Form TM 34: Corrections to the Registered Owner’s Address
  • Form TM 35: Cancellation of a Registered Mark
  • Form TM 36: Removing all or a part of the products or services
  • Form TM 38: Modifications to a trademark registration
  • Form TM 40: Classification Changes

How to Amend a Registered Trademark?

An application for amendment may be submitted by the applicant in the relevant form (TM-M/TM-P) and with the necessary supporting documentation. It is possible to apply in person or online, paying the necessary cost. Upon submission, it will be investigated by the Registry. To confirm the legitimacy of the application, the Registry may ask for any further details or supporting documentation.

What is a Hassle-free Trademark Registration Process?

It is preferable to make sure that you do it properly the first time, even though there are options to fix your trademark application. If not, there may be a notable delay in the processing of your application.

If you choose Kanakkupillai to file your trademark application online, you may be confident that it will be handled correctly. We collect the required documents from you and have our experts validate it before moving forward with the application. Register your trademark instantly in three simple steps.

Conclusion

In India, modifying a trademark may come with extra obligations on the Registry and the applicant. The process of registering a trademark may take longer if there are extra processing hold-ups. Therefore, when filing and renewing a trademark, the proper steps should be taken to stop trademark alterations in India. Making the actions necessary to safeguard a distinctive trademark character and sticking with the mark.

FAQs

  1. Can a trademark be edited?

Yes, a trademark may still be modified after it has been granted by submitting Form TM 38. Five copies of the updated trademark are need to be submitted with this. The trademark’s certificate of registration is issued with the modifications if the changes are accepted.

  1. When is the appropriate time for me to submit a trademark application amendment?

It is best to submit a modification earlier the report on the trademark analysis being released. It may be necessary to carry out a fresh investigation or re-advertise the mark if you file an amendment after receiving the examination report, or after the trademark is officially advertised, which could cause delays.

  1. How should a trademark application be corrected?

An applicant may apply online using Form TM 16 and provide the necessary amount to be paid for clerical errors in the TM prior to the mark’s registration. After reviewing this application, the Registrar’s Office will make it possible for any mistakes to be fixed. Corrective action would be taken following document verification.

  1. Is it possible to modify my Trademark Logo?

It is not permissible to alter the wordmark, logo, or colour details.

  1. What does the term “rectification” mean in trademark law?

Trademark rectification is the term for redressing mistakes or inconsistencies in the trademark registry. Concerning trademarks, its objective is to ensure that their current state and details are accurately recorded in the register, including ownership, registration details, and other relevant information.

Swetha LLM

Swetha, LLM, a lawyer with skills in writing legal content, is passionate about simplifying complex legal concepts and engaging readers with her insights of nuanced legal ideas. She is able to preserve the accuracy of legal material while adjusting the tone and style to fit the audience.