Permissible amendments, rectification and cancellation procedures for a trademark in India

Is amendment in Trademark application allowed under the Trademarks Act?

The trademark law in India provides the Applicant of a trademark with an opportunity to correct an application only for minor changes and not for changes that substantially affect the identity of the trademark or the goods or services covered by the application. The correction or amendment as allowed can be made before or after registration of the trademark application.

What are the permissible amendments under the Trademarks Act?

Following are the permissible amendments under the Trademarks Act:

• Amendment/correction in the name, address or description of the registered proprietor
• Cancel the entry of a trademark on the Register
• Amendment of user date
• Amendment in the specification of goods and/or services.

Can action be taken against a trademark that is wrongly registered or wrongly remaining on the Trademarks Register?

A mark may have been wrongly registered or may be wrongly remaining on the register. In such cases the Act provides for rectification of the register.
Any person, aggrieved by an entry wrongly made or wrongly remaining on the register of trademark, is entitled to file a petition for:

• Rectification of the Trademark in the Register
• Cancellation of Registration or removal of the registered mark.

What is rectification of a Trademark?

Rectification of a trademark can be filed in India on grounds of contravention or failure to observe a condition of the trademark already entered in the Register or an error in registering the trademark.The grounds for filing a rectification action are as follows:

• Contravention or failure to observe a condition entered in the Register
• The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered mark.
• The entry made in the Register was made without any sufficient cause i.e. registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered mark, etc.
• Error or defect in any entry made in the Register.
• The entered mark was wrongly remaining on the Register i.e. it is contrary to some of the provisions of the Act or is likely to cause confusion amongst the public and trade.
• The renewal fee has not been paid.

What is cancellation of a Trademark?

Cancellation of a trademark is a process in which a party seeks to remove a registered trademark from the register. This can be done: –

• If it is proved that the trademark was registered without any bona fide intention of use by the owner
• If the trademark hasn’t been used for a continuous period of five (5) years from the date of registration of the mark.

Who can file for rectification/cancellation proceedings?

Ans: Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may file for rectification/ cancellation proceedings. An ‘aggrieved person’ implies any party whose trading interests are affected by the presence of the registration on the register.

Where does one file a rectification/ cancellation action?

An application can be filed in the prescribed manner before the Trademarks Registry where the application for its registration was filed or at the Appellate Board, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

What is the effect of rectification?

The Tribunal i.e. the Registrar or the Appellate Board, after giving a notice as well as an opportunity of being heard to the concerned parties, may either cancel, vary, add or remove the entry in question.

What are the documents required for filing a rectification/ cancellation action?

The documents required for filing a rectification/ cancellation action are as follows:

1. An application is to be made in triplicate on the requisite form
2. A statement of case, setting out the nature of the Applicant’s interest, facts upon which the case is based and the relief that is sought.