Trademark Rectification or trademark cancellation refers to the process through which a person applies for removal of a registered trademark from the Register of Trademarks.
An aggrieved person can apply for trademark rectification/ cancellation on the grounds of contravention or failure to observe a condition of the trade mark already entered in the Register or an error in registering the trade mark. Section 57 of the Trade Marks Act, 1999 provides for the grounds for Rectification of the Register. An application for rectification or cancellation of a trademark can also be filed on the grounds of non-use of the trademark for a prescribed period of time after the registration of the trademark.
An application for rectification of a registered trade mark is required to be filed before the same Trade Marks Registry where the application for its registration was filed.
Grounds for Trademark Rectification in India
Section 57 of the Indian Trade Marks Act, 1999 (hereinafter referred to as "Act") provides for the grounds for Rectification of the Register:
- Clauses (1) and (2) of Section 57 of the Act provides that when any person aggrieved of any entry in the Register of Trade Marks makes an application to the Appellate Board or to the Registrar, the Tribunal may take such steps for cancellation or variation of the registration of the trade mark on the ground of any contravention or failure to observe a condition. The right to file an application for rectification under Section 57 is a statutory right conferred upon a party who is aggrieved by an entry made in the Register. The said right is circumscribed by certain requirements such as:
- Contravention or failure to observe a condition entered in the Register in relation to the registration of the mark; (Section 57(1)).
- The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered mark; (Section 57(2)).
- The entry made in the Register was made without any sufficient cause i.e. registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered mark, etc. (Section 57(2)).
- Error or defect in any entry made in the Register (Section 57(2)).
- The entered mark was wrongly remaining on the Register i.e. it is contrary to some of the provisions of the Act or is likely to cause confusion amongst the public and trade; e.g. The mark is in contravention of Sections 9 and 11 of the Act (Section 57(2)).
- The renewal fee has not been paid.
- Clause (4) of Section 57 provides that the Tribunal i.e. the Registrar or the Appellate Board, after giving a notice as well as an opportunity of being heard to the concerned parties, may either cancel, vary, make or remove the entry in question.
- Under Section 31(1) of the Act the original registration of the trade mark shall be prima facie evidence of the validity of the mark in all legal proceedings relating to a trade mark (including in an application under section 57)
- An application for rectification of a registered trade mark is required to be filed before the same Trade Marks Registry where the application for its registration was filed. The procedure before the Registrar is prescribed under Rules 97 to 100 of the Trade Marks Rules, 2002. An application under Section 57 is to be made in duplicate on Form TM-O (in the case of a collective mark or a certification mark). The application is to be accompanied by a statement of case, setting out the nature of the Applicant's interest, facts upon which the case is based and the relief that is sought.
- Although the Registrar of Trademarks is empowered to hear rectification petitions against registered trademarks, in cases where an infringement suit is pending before a civil court and where the defendant in the suit is contesting the validity of the plaintiff's trade mark, the power to hear applications for rectification of such trademarks vests only with IPAB and not with the Registrar.
How to prevent trademark rectification or cancellation in India?
A registered proprietor in order to prevent rectification or cancellation of a trademark in India shall:
- Renew their mark from time to time.
- Preserve the distinctive character of the mark and avoid it from becoming deceptive.
- Not keeping the mark unused for a period exceeding five years and 3 months from the date of registration of the mark.
In a landmark judgment, Mr. B.V. Elango Himachalapathy vs. M/s. Rank Xerox Limited & Others, the IPAB rejected four out of seven rectification applications of B.V. Elango Himachalapathy filed against the registration of "XEROX" as a trade mark on the grounds of mark becoming generic. B.V. Elango Himachalapathy, owner of a photocopying shop initiated rectification proceedings in the Appellate Board after a suit was filed by Xerox Corporation against them in 2004. Elango contended that the word "XEROX" was now used as a common word and has become synonymous with photocopying. Thus, it has come to be used in a generic sense and has lost its distinctiveness and by acquiescence it has fallen into the public domain.
Hon'ble Mrs. Justice Prabha Sridevan observed that "XEROX" had been periodically renewed, without any objection or opposition by any party and that at least from 2003, Xerox had begun to aggressively protect its mark by campaigning it with advertisements like 'If you use Xerox the way you use Zipper, our trade mark could be left wide open" and "If you use Xerox the way you use Aspirin, we get a headache".
IPAB noted that though the trade mark "XEROX" had been used as a common term by the public, however Xerox Corporation was the owner of the said trade mark as was evident from its renewal and continuous use. Further, it was observed that the competitors knew of the existence of the mark "XEROX", and had their businesses been hampered by the continuing use/existence of the mark "Xerox" in the Register, they would have protested or taken an action.
The Board therefore held that "...But we find the long continuous existence on the Register and the public acceptance of the trade mark rights when pointed out are factors which weigh with us in our exercise of discretion.
Thus, the judicial trend, while dealing with the provisions of rectification under Section 57, has always been to keep all facts of each case under due consideration while deciding the matter.
Trademark Rules, 2017 providing the rules and procedure for trademark rectification can be accessed here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.