Submitting a Trademark Rectification

Typically, the trademark owner initiates the process of submitting a trademark rectification to rectify a specific error. Alternatively, it can be initiated by an individual or entity that has been violated upon by this mistake.

Please be aware that the applicant is required to assemble compelling evidence, particularly when seeking the removal of a registered trademark owned by another individual or entity from the official register of trademarks.

Can rectification have an impact on the validity of a Trademark?

When a request is made, all parties involved are given an equal opportunity to present their case, and as a result, the trademark entry in the registry may be cancelled, revoked, or rectified.

Common reasons for filing an application for Trademark Rectification in India are as follows:

- Non-renewal of the previous trademark.

- In light of updated information.

- Failure to use the registered brand name for a period exceeding five years, which can lead to Trademark Rectification.

- Violation of one or more conditions specified in Section 9 and Section 11 of the Indian Trade Marks Act of 1999.

- Introduction of new class(es) of goods or services that do not comply with the registered trademark's business scope.

- Acquisition of registration through misrepresentation of facts, such as the existence of a prior registered mark, requiring a suitable explanation for registration.

- Instances where the mark mistakenly remained on the register and caused or had the potential to cause conflicts.

- Explicit exclusions, such as disclaimers, conditions, or restrictions.

- Failure to pay the renewal fee.

Trademark Rectification Registration Procedure
In cases where the initial trademark registration undergoes a Formalities Check or is sent back to the EDP, the opportunity for a hearing and review is provided, requiring a resubmission. In this scenario, a revision deed must be prepared to address any concerns raised by the trademark examiner.
•    The application form used for requesting trademark amendment must be duly completed in triplicate, using Form TM-O.
•    It is important to ensure that the trademark revision application offers a clear and original explanation of the grounds pertaining to the initial application.
•    Your argument for amending the specified trademark must be supported by substantial evidence.
•    Furthermore, it is strongly recommended to seek professional assistance from a trademark rectification expert, who possesses up-to-date knowledge and understanding of the latest developments in the trademark market.
•    At Taxapillar, our team of dedicated specialists and experts wholeheartedly provide their professional services for all tasks related to trademark objection, trademark registration, and trademark rectification."
How to prevent Trademark Rectification?
•    Strive to preserve the distinctive nature of your mark and prevent any potential confusion.
•    Take immediate and lawful action upon noticing any infringement.
•    Ensure the regular renewal of your trademark registration.
•    Maintain consistent usage of your mark, as prolonged non-use could lead to dismissal.
•    Priority should be given to maintaining accurate classification.

Outcomes of Valid Trademark Rectification
•    In the event that it can be proven that a trademark was registered with deceitful intent and no verifiable use of the trademark has occurred within three months prior to its intended use date, and five years have elapsed since registration without any usage, the trademark may be subject to removal from the official register.
•    Please note that the period of five years is calculated from the date on which the mark was officially registered. For example, the registration date is considered the starting point instead of the application date. Upon receiving the application, the Registrar notifies the registered proprietor to submit a counter statement.
•    Upon receiving the application, the Registrar notifies the registered proprietor to submit a counter statement.
•    Once the counter statement has been submitted, the matter proceeds to the verification stage. The parties involved may be required to provide their respective evidence in the form of an Affidavit. This process is followed by a hearing, after which a decision is rendered.
•    To safeguard your registered trademark from rectification, cancellation, or removal, it is advisable to take necessary precautions, such as renewing the trademark periodically and ensuring that its distinctive nature is maintained. Failure to do so may result in the mark being rendered ineligible for use beyond the five-year mark.