By Priya Adlakha and Rima Majumdar
The procedure for registration of a trade mark in India as laid out in the Trade Marks Act, 1999 (hereinafter referred to as the Act) along with the Trade Marks Rules, 2017, (hereinafter referred to as the Rules). The Act and Rules give rights to the trademark owner as well as third parties, opportunities to file amendments, rectifications, and cancellations in respect of the trademarks at both pre- and post-registration stages.
Amendment and Correction
An amendment of particulars or correction of an error in the Register may be a mere clerical change to the extent that such trade mark is not changed substantially. An application for making a substantial amendment, such as for a substantial amendment in the trade mark as applied for, specification of the class of goods/services (excepting re-classification) or any substantial amendments/changes to the nature of the trade mark application is not eligible.
Amending trademark applications is governed by Section 22 of the Trade Mark Act read with Rule 37, under which the Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration, permit the correction of any error in, or in connection with the application, or permit an amendment of the application.
Further, under Section 58 read with Rules 40 and 101, the Registrar may, on an application made in the prescribed manner by the registered proprietor of a trademark, correct or change any error in the particulars or entry of the registered proprietor of a trademark, cancel the entry of a trade mark on the Register, or strike out any goods or classes of goods or services from those in respect of which a trade mark has been registered. Thus, there is a provision for consequential amendments or alterations to be made in the certificate of registration.
Rectification and Cancellation
Rectification refers to the correction of an error or omission made in the trade mark application as recorded in the Trade Marks Register. On the other hand, cancellation refers to the process wherein a party seeks the removal of a trade mark from the Register.
Rectification of Trademark
Section 57 read with Rule 97 gives power to the Registrar to cancel or vary registrations and to rectify the Register. On application made in the prescribed manner to the High Court (earlier Appellate Board) or to the Registrar, by any person aggrieved, the Tribunal may make such order as it may think fit for canceling or varying the registration of a trade mark on the ground of any contravention or failure to observe a stipulated condition. Further, any person aggrieved by the absence / omission or error / defect in the Register of any entry, or by any entry made in the Register without sufficient cause, or wrongly remaining on the Register, may apply in the prescribed manner to the High Court (earlier Appellate Board) or to the Registrar, who may then pass such order for making, expunging or varying the entry as it may think fit. The authority (i.e. either High Court or Registrar) may, of its own motion, or after having given notice in the prescribed manner to the parties concerned and after having given them an opportunity of being heard, pass any order for rectification of the entry.
The landmark case of Mr. B.V. Elango Himachalpathy v. M/s. Rank Xerox Limited and Others, wherein seven rectifications were filed against the subject mark XEROX on the grounds that it had become a common and generic word. However, the IPAB rejected four out of the seven rectifications. It further held that long, continuous and extensive use and acceptance by the public of the trade mark are factors that ought to be considered in the IPAB’s discretion, and the [present] case was an apt example of the same. In another landmark case, Vishnudas Trading as Vishnudas v. The Vazir Sultan Tobacco Ltd., wherein the subject mark was CHARMINAR. Vishnudas Trading had filed a rectification application on the grounds of non-use with respect to chewing tobacco that had been permitted by the Registrar. The matter was heard in appeal before the Supreme Court, wherein it held that “the rectification of the registration for limiting or confining the registration of the trade mark by the party to particular goods, cannot be held as illegal or unjustified.”
Cancellation of Trademark
Section 47 of the Trade Marks Act, 1999 provides for removal of a registered trademark from the Register and imposition of limitations on grounds of non-use. A registered trade mark may be taken off the Register in respect of the goods or services in respect of which it has been registered upon application made in the prescribed manner to the Registrar or the High Court (earlier Appellate Board) by any person aggrieved on the ground either that the trade mark was registered without any bona fide intention on the part of the owner to use the same in relation to the goods or services covered by it, or that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark had actually been entered in the Register or longer had elapsed during which there had been no bona fide use of the trade mark in relation to those goods or services in respect of which it had been registered.
A cancellation may also be filed on the grounds of mala fide registration, or wrongly remaining on the Register, which grounds need to be established conclusively before the adjudicating authority by the party making the claim.
The terms rectification and cancellation (and revocation or invalidation) may be used interchangeably.