A trademark is a distinctive mark of a business. Instead, this trademark safeguards the brand name, logo, and symbols of products or services. Still, even though it is registered, a trademark is not safe from legal disputes. In Indian trademark law, a trademark can be corrected or deleted from the register if it is deemed to be incorrectly registered, improperly maintained, or used in bad faith.
The trademark rectification process enables aggrieved parties to rectify mistakes, invalidate wrongful registrations, or eliminate deceptive trademarks that might injure consumers or businesses. It is essential for businesses, trademark owners, and legal practitioners to understand the grounds for rectification to protect their brand identity.
This blog discusses the different grounds of rectification of trademarks in India, the provisions of law under the Trademarks Act, 1999, and the process of rectification or cancellation of a trademark.
Introduction
A trademark is a vital intellectual property right that assists companies in creating brand awareness and avoiding abuse of their identity. Trademarks in India are regulated by the Trademarks Act of 1999, which offers a legal framework for trademark registration, protection, and rectification.
Yet, not all registered trademarks are valid forever. There are circumstances under which a trademark has to be rectified or erased because of mistakes, legal infractions, or misuse. The trademark rectification process guarantees that-
- Erroneously registered trademarks are rectified or erased.
- Trademark disputes between parties are resolved legally.
- Customers are safeguarded against deceptive or false marks.
Intellectual Property Appellate Board (IPAB) and Trademark Registrar govern rectification proceedings for ensuring ethical competition and trademark purity in the market.
What is Trademark Rectification?
Trademark rectification is the legal process of erasure or correction of a registered trademark from the Trademarks Register. It may be initiated by
- The owner of the trademark (to rectify a registration error).
- An aggrieved third party (objecting to the validity of a registered trademark).
- The Registrar of Trademarks (on finding an irregularity in registration).
Trademark rectification may result in the rectification of trademark errors (e.g., incorrect proprietor name, incorrect classification) or the cancellation of a trademark on the grounds of non-use, bad faith registration, or false information.
Grounds for Rectification of Trademark in India
A trademark can be rectified or erased from the register based on several grounds. The most usual grounds on which rectification of a trademark is sought are-
1. Non-Use of the Trademark
A registered trademark should be used perpetually by the owner. If a trademark has not been put to use for five consecutive years from the date of registration, it becomes subject to cancellation.
For instance, when a company files for a brand name but never uses it in any business undertaking, a third party can make an application for cancellation for non-use under Section 47 of the Trademarks Act, 1999.
2. Wrongful Registration (Non-Distinctiveness)
A trademark has to be unique and distinctive. When a registered trademark-
- Directly describes an article or service (e.g., filing for “Cold Drink” for a drink).
- Lacks novelty and is too common.
It may be challenged on wrongful registration and deleted from the register.
For example, if a company gets the word “Tasty” registered for a food brand name, another company may challenge the registration, citing that “Tasty” is a generic term and cannot be monopolized.
3. Trademark Acquired by Fraud or Misrepresentation
Where a trademark was obtained illegally by providing false information, misrepresentation, or concealment of material facts, it can be rectified or cancelled.
For instance, where a company fraudulently asserts itself to be the earliest user of a trademark when another brand had previously used it, the aggrieved party may apply for rectification based on fraudulent registration.
4. Likeness to a Mark Already Registered (Likelihood of Confusion)
A trademark should not cause consumers to be confused by being overly similar to an already registered trademark. If a trademark is substantially similar to another mark in Name or similarity in sound or Logo, symbol, or image overall.
It can be objected to under Section 57 of the Trademarks Act, 1999.
For example, if a new company registers “McRonald’s” as a fast-food brand, it may be challenged by McDonald’s on the grounds of being deceptively similar and misleading.
5. Trademark Conditions Violation
Where a trademark was registered subject to conditions (for example, used in a limited region or trade) but afterwards used contrary to those conditions, it can be corrected or invalidated.
For instance, where a pharmaceutical trademark is registered only in India, but the owner used it globally without having the registration revised, a dispute can be instituted.
6. Misleading or Deceptive Trademark
If a trademark is deceptive or misleading, i.e., it misleads the nature, quality, or origin of goods, it can be rectified.
For instance, if a firm sells artificial juice with the brand name “PureFruit Natural”, rivals or consumer protection agencies can apply for rectification on the grounds of misleading branding.
7. Trademark Becoming Generic
With the passage of time, a distinctive trademark may lose its uniqueness and become generic in the industry. In such a case, it is challenged and eliminated.
An example of a trademark that turned generic globally is “Xerox” (previously a distinctive brand, now used generically for photocopying).
If a registered Indian trademark meets the same destiny, it can be challenged and corrected.
8. Contrary to Public Interest or Morality
A trademark can be deleted if it is-
- Against public morality (for example, with offensive or obscene words).
- Violates religious feelings.
- Encourages illegal activity.
For instance, a trademark encouraging illegal drugs or hate speech can be deleted under the Trademarks Act of 1999.
Procedure for Trademark Rectification in India
In case a trademark has to be rectified or deleted, the following legal process is adopted-
- Filing a Rectification Application- The aggrieved party is required to file an application with the Trademark Registry or the High Court.
- Submission of Evidence- Evidence of wrongful registration, non-use, or deceptive character of the trademark has to be filed.
- Examination by Authorities- The Registrar of Trademarks or the Intellectual Case sent to the Intellectual Property Appellate Board (IPAB).
- Hearing and Decision- Both parties are presented with a chance to argue their case prior to making a final determination.
- Outcome- The Successful in removing or rectifying the trademark.
Conclusion
Trademark rectification is very important for ensuring equitable competition, brand identity protection, and consumer trust. Due to fraud, deceptive branding, non-use, or identity with an already existing mark, companies should be keen to check the legality and integrity of trademarks.
For companies, performing adequate trademark searches prior to registration, keeping track of competitor action, and adhering to legality can avoid rectification. When a brand is inappropriately registered, there is legal recourse to oppose and correct trademarks, making sure only authentic and lawfully acquired trademarks are left in the register.
References
The Trade Marks Act, 1999 (Act No. 47 of 1999)
https://www.ipindia.gov.in/trade-marks.htm
https://tmrsearch.ipindia.gov.in/tmrpublicsearch/
https://ipindiaonline.gov.in/
