Rectification is the legal procedure to correct or rectify an error or an omission that has been made in the details of a trademark as recorded in the trademark register, after the trademark registration. A mark may have been wrongly registered or may have remained on the register even after its expiry. In such cases, the Indian Trademark Act provides for file rectification of the registered trademarks.
Who can file rectification petition:
The aggrieved party is entitled to file a petition for the rectification or cancellation of registration or removal of the registered mark.
Grounds for filing an application for trademark rectification or cancellation:
i) That the registration was made without sufficient cause or registration was obtained by misrepresentation of facts, similar to an earlier mark registered.
ii) That the mark was wrongly remaining on the register in case it is against to some legal provisions of the Act or likely to cause confusion.
iii) Making any changes, amendments, or modification in connection with any registered trademark as per the recent advancement.
iv) Non-use of any registered trademark for more than five years by the registered proprietor.
v) Non-renewal of the original or previous registration of the trademark.
vi) A trademark could be expunged from the register in case registration is obtained by fraud. Particularly, where the registration has been obtained by suppression of material fact or false statement it is known as registration obtained by fraud.
vii) Inclusion or addition of certain more class or goods or services, in case it is against to the business extent of the registered trademark.
viii) Non-conformity with one or more grounds stipulated in Section 9 and Section 11 of the Indian Trade Marks Act of 1999.
Where to file for trademark rectification?
For trademark rectification or trademark cancellation, an application can be filed before the Trademark Registry (in appropriate trademark jurisdiction i.e Mumbai, Chennai, Kolkata, Delhi, Ahmadabad), where the trademark application was originally filed for attaining its registration.
Procedure for trademark rectification in India:
The application form used to serve trademark rectification or cancellation must be filed in prescribed form. The application must include the statement of case, and submit along with the prescribed fee. Further, the application can be submitted to the Registrar or IPAB.
On receipt of the application, the Registrar serves notice to the registered proprietor to file a counter statement.
Once the counter statement is filed the matter arrives at the evidence stage. The parties may require filing their respective evidence in the form of an Affidavit. After this, there will be a hearing. Subsequently, the order is passed.
In order to prevent the rectification or cancellation or removal of a registered trade mark from the register, proper precautions must be taken i.e. the trademark renewal from time to time, not doing anything which will destroy the distinctive character of the mark or not allow the mark to remain unused for a period exceeding five years.