Laws on Rectification of a Trademark: Lawyers Advice
Intellectual Property means the rights given to the corporate over the creations of their mind. The creator of a product or an idea by having these rights has a right to use it for a certain period. There are various sub-areas in Intellectual Property Rights. Trademark is one among them. Trademark is a right used by a company to distinguish their product from the other competitors. It consists of designs, symbol and expressions. A company can frame a suit for infringement of trademark if any of its competitors are using that specific trademark for its purpose. To get a trademark for the specific product sold out by a company, the registration before the Trademark Registry. By having a trademark, others cannot copy the same for a similar kind of products.
Rectification under the Trademarks Act, 1999
Registration of Trademark before the Trademark Registry will enable the production of a company to distinguish from its competitors. Unfortunately, there may be some error or conflict in the trademark used by a particular company for its goods. It may be due to the usage of such trademark at the time of registration or due to some errors while registering before the Trademark Registry. The term ‘Rectification’ means correction or removal of a registered mark.
Trademark Registration of a good by a company may have some default in it. These faults may have not been corrected at the time of Trademark Registration. A company may face several legal challenges due to these defects. The Trademarks Act, 1999 allows such parties to rectify the same.
When to file for Trademark Rectification
The Trademark Act, 1999 provides that certain class of people can file an application before the Intellectual Property Appellate Board (IPAB) or before the Registrar. Normally, the aggrieved party files an application for rectification under the Act. In the case of Adidas AG v. Union of India (W.P. (C) 3125 2013), the Court held that the expression ‘person aggrieved’ is a term of wide amplitude and an applicant for registration whose trademark has been objected or refused because of prior registration by the third party of the same or similar identifying mark for the same goods or description of the goods or whose application for registration is opposed by another person based on prior registration of the same or similar trademark by the registry is a person aggrieved. The grounds for which the rectification of trademark can be made under section 57 of the Act are:-
• If the Registered Proprietor has committed contravention or failure to observe anything entered in the Registered mark.
• If the Registered Trademark suffers from the omission of entry into the register.
• If the entry in the Trademark Registry was made without any cause.
• If the trademark entered in the registry is wrong.
• If there is an error or mistake in the registration of the trademark.
Is it possible to apply for rectification without the use of trademark?
Rectification for a registered trademark can be made for some error or conflict. The question arises is whether a company can file for rectification of a trademark if it is not used for its product for a couple of years. In Kabushiki Kaisha Toshiba v. Tosiba Appliances (SLP (C) No. 5542, 2006), the Court held that the intention to use a trademark sought to be registered must be genuine and real. When a trademark is registered, it confers a valuable right. It seeks to prevent trafficking in trademarks. Section 47 of the Act provides the grounds for removal of a registered trademark upon the non-usage of the product. The conditions for removal of a registered trademark are:-
• If the trademark was registered without any bonafide intention by the applicant.
• If the trademark was not used by the applicant without any bonafide intention three months before the application for removal of the trademark.
• For up to five years if the registered trademark was not used for any purpose.
How to apply for Rectification before the Registrar?
To apply for rectification under the Act, a company need to oblige with the rules prescribed under the Trademark Rules, 2002. Rules 92 to 101 of the Trademark Rules prescribes the procedure to file an application to the Registrar for the rectification of trademark. Failure to do so may end in unsuccessful rectification of a registered trademark. The steps to follow for the rectification of the trademark before the Registrar are:-
• Filling out the TM-26 Application:- The first step for rectification proceedings before a Registrar is to fill TM-26 or TM-43 form in triplicate with the facts of the case. The copies of the number of Registered Proprietor along with the number of registered users need to be attached in the form. A declaration stating that there is no action pending on any Court regarding the trademark need to be attached along with these documents. In the case of Patel Field Marshall Agencies & Another v. P.M. Diesels Limited and Others (SLP (C) No. 27309, 2012), it was held by the Court that section 124 of the Trademark Act which deals with the stay of proceedings where the validity of registration of the trademark is questioned, specifically provides that if a proceeding for rectification of the register concerning the trademark of either the Plaintiff or the Defendant is pending before the Registrar or the High Court and when a suit for infringement is filed wherein the aforesaid plea is raised either by the Defendant or by the Plaintiff, such suit shall remain stayed.
• Payment of fees and verification of the application:- After filling out the form TM-26 along with supporting documents, the next step is to pay the respective fee for the application. The concerned authority for the rectification may check these documents and verifies the application.
• Intervention by any other party:- If any third party need to intervene in the procedure for rectification, such party can file a Counter-Statement in the form TM-6 in triplicate. A copy of the Counter-Statement shall be given to the Applicant within one month of such a statement.
• Reply to the Counter-Statement:- After getting the copy of Counter-Statement, the Applicant needs to give reply to the statement in the form of an Affidavit along with further evidence or exhibits within two months. A one-month extension can be given for the same.
• Hearings for the Parties:- By completing these procedures, the Tribunal conducts a hearing for both the statements. A one month notice will be given for the hearings. However, the Registrar shall have the final say in whether the application for rectification of trademark is refused or the claims by the other party are dismissed or not.
How to apply for Rectification before the Intellectual Property Appellate Board?
The other method that a company can use to rectify the registered trademark is to apply to the Intellectual Property Appellate Board (IPAB) in case of conflict. The procedures for the same are prescribed under the intellectual Property Appellate Board (Procedure) Rules, 2003. No case should be pending in any Courts. In The High Court of Judicature at Madras v. M/S Micro Labs Limited (2006), the Court observed that even though the marks are similar, the products are different and the Intellectual Property Appellate Board is the appropriate authority to decide the issue concerning the trademark. The steps to be followed in applying for rectification before the Board are:-
• Filling the form in paper book format:– To apply for rectification of trademark before the Intellectual Property Appellate Board, the company need to fill out the Form-1 in three sets of paper book format and submit all evidence in the form of Affidavits.
• Authorisation:- If the company decides to make someone as an authority to be represented before the Intellectual Property Appellate Board, the copy of authorisation need to be attached by the company along with the application forms and affidavits.
• Payment of fees:- After the filing of the application form, the next step is to pay the fees as a bank draft in favour of the Deputy Registrar of Intellectual Property Appellate Board.
• Attachment of Exhibits:- After the payment of fees, the next step is to attach the exhibits. A copy of the exhibits shall be given to the other party.
• Changes in the application forms and documents:- If there is any defect in the application or any of the above proceedings, the rule is to rectify the defect in the presence of Deputy Registrar if the same is formal. If the defect is not formal, then the time limit of 15 days is given to rectify the same. Moreover, the same rule of 15 days is applicable in the case of an application by post.
• Notice to the Respondent:- The Respondent shall get a copy of the applications and all other relevant documents filed by the Applicant in paper book form. The Respondent is required to file a Counter-Statement in Form-1 within two months of getting the notice. A copy of the reply to the same shall be communicated to the Respondent.
• Hearings before the Intellectual Property Appellate Board:- After the above, all procedures the Appellate Board will notify the parties the time, date and place of hearings for their case and finally orders the verdict which is signed by the Members of the Bench. Moreover, in Data Infosys Limited v. Infosys Technologies Limited (2016), the Court held that the Intellectual Property Appellate Board has exclusive jurisdiction to consider and decide upon the merits of a plea of trademark registration invalidity as per section 47 and 57 of the Act and access to Intellectual Property Appellate Board was not dependent on the civil court’s prima facie assessment of tenability of a plea of invalidity of trademark registration.
Rectification of trademark which is registered allows the companies to remove the error from their product’s label. It also makes the company file a case for infringement of a registered trademark. However, for such application, any kind of pending suits before any Court should not be there.
Authored By: Adv. Anant Sharma & Muhammad Aslah