Trademark

Is it possible to do Trademark Modification in India?

calendar10 Oct, 2020
timeReading Time: 6 Minutes
Trademark Modification in India

Trademark registration is an essential step towards brand building and its security. Sometimes the application for Trademark registration is susceptible to errors and mistakes. As the remedy for modification of error or omission, there are provisions prescribed under the Trade Marks Act to rectify details submitted in the application. Trademark modification is possible prior to registration and post-registration as well.

Rectification is a legal procedure for correcting or rectifying an error or an omission which has been made in the details of trademark as recorded in the trademark register, after having trademark registration. A mark has been wrongly registered or may have remained on a register even after its expiry. The Indian Trademark Act provides to file rectification of the registered trademarks.

Pre-registration Modification

When a trademark is registered, an applicant can file the request for correction or amendment of a trademark application by filing trademark in Form TM-M along with the specified fee and supporting documents. It is done  basically when there is a correction of any clerical error or any minor technical amendment required due to mistake in filing and data entry. But no substantial alteration or amendment in an application can be permitted which may substantially alter the proprietor details, specification of goods and services as to use of the mark.

Under the Trade Marks Act, the trademark modification would be allowed if:

trademark modification

Pre-registration modifications can be initiated by following

  • The applicant himself: In the situations, when he/she wants to clarify or correct an error made while filing an application. 
  • The Registry: The registry might send back an application for modification if the errors or omissions are detected. Such applications is marked as ‘Formalities Check Fail’ by an authority. The registrar will send an application back to an applicant with the reasons why an application will not be accepted for the next stage of the Trademark registration. An applicant can rectify the Trademark application and re-submit it with a registrar.

Permitted Alterations

These changes do not alter a nature of the application. Changes such as in address of the applicant or in the service address, deletion or confinement of any item in any specification of goods or services, confinement or limitation in sales of goods or services, division of multiclass application are permitted. In case of change, because of an error in data entry, the trademark officer after verification of the relevant document can make the change in a system along with remarks to the effect. The registry can also direct for the amendments in an application filed after its examination.

Alteration of Trademark once it is Registered

The alteration of trademark is provided under Section 59 that has the following conditions for the alteration of trademark:-

  • If a public search for the trademark has to be done, then the alteration will not be allowed
  • Altertion will be allowed in case change in the name of the business
  • In case of change in the address of a business
  • If any new license registration has been taken or given up only then alteration is permitted
  • If in case there will be any change in the usage and control, however, mostly in case of a collective trademark this type of alteration is allowed.

Non-permitted Alterations

Initially, trademark cannot be changed, under any new trademark application. The list of goods and services included in a trademark is limited, and they cannot be extended. The following changes will alter a substantial nature of an application, and therefore it is not allowed.

  • Any change of Logo, word mark, and its colour specification
  • Any change in User Date claimed
  • Any change of type of trademark
  • Any change in a class of trademark
  • Any change in trade description of the mark

The registry may allow the changes in case of few circumstances but to adopt the changes by an applicant is the discretion of the registry. There are few examples when the modification is not allowed. In those cases, an applicant can make the fresh application of registration.

Post-registration Modification

Once a trademark is registered, then the different provision allows and governs the alteration of registered trademarks. The registered proprietor requires filing in Form- TM-P along with the modified and amended trademark. It depicts how a trademark will appear after a modification. If the amendments are allowed after the trademark has been registered, then the corrections can be initiated by only an applicant himself. It has been done when an applicant wants to correct errors and certain details by an amendment. For instance, allowed modification in case of change in place of business, change in the name of a company under which the trademark is registered under etc. It is permitted, and it is the discretion of the registrar.

Trademark Modification Procedure

The applicant can file for a modification application in the concerned Form TM-M or TM-P with all the supporting documents. The mode of an application may be online or physical filing by payment with the prescribed fee. The application when filed will be scrutinized by the registry. Officer-in-charge can seek the clarification about the supporting documentation to prove the genuineness of an application.

Procedure for trademark rectification in India

The form for serving trademark rectification or cancellation can be filed in a prescribed form. The application will include the statement of a case, which is submitted along with the prescribed fee. Further, an application can be submitted to the Registrar or IPAB. On the receipt of an application, the registrar will serves notice to a registered proprietor to file a counter statement. Once a counter-statement is filed, the matter will be arrived at an evidence stage. The parties then require filing the respective evidence in form of an Affidavit. After this, the hearing will be conducted and subsequently, an order will be passed.

Read our article:Process of Trademark Registration: Step by Step Guide

Procedure to alter the trademark (as per the trademark rules 2017)

  • Any change in the expunging, making, or varying of any entry related to the trademark or a collective trademark shall be made in Form TM-O
  • Along with the form, there can be a statement declaring all facts of the case, as to why it is changed, its details and the reasons behind these changes.
  • If an application is made by the person who is not the registered user of a trademark, then he has to submit an application to the Trademark Registry.
  • The application must be firstly forwarded to all the people who are the registered users of a trademark in order to take their consent.
  • The registrar will then serve an application to each of the registered users within 1 month. Then it will wait for another 1 month, just in case if there are any queries.
  • If no counter proposals are seen within 3 months of the service, then alteration will be allowed in accordance with section 98 of the trademark rules, 2017
  • If in case the query comes up it must be served to the original applicant for answers within 1 month of the service to the user he shall have to defend the alteration and its necessity. After all queries are satisfied, the alteration will said to be complete.
  • If there is change in registered office address of the business, then Form TM-P must be filed to the registrar.
  • Once an application is made in Form TM-P, then a registrar will publish an application in the journal for public, if no query is received, an alteration will be made. In case the query comes, it must be resolved before the final alteration is sanctioned by a registrar.

Where to file for the trademark Rectification?

For the trademark rectification or trademark cancellation, the application will be filed before the Trademark Registry (trademark jurisdiction, i.e. Mumbai[1], Kolkata, Chennai, Delhi, Ahmadabad), where a trademark application can be originally filed for attaining its registration.

Grounds for Filing the Application for Trademark Rectification or Cancellation

  • If a registration was made without sufficient cause or if the registration was obtained by misrepresentation of facts, similar to an earlier trademark registered.
  • That the mark was wrongly remaining on the register if it is against some legal provisions of the Act or likely to cause confusion.
  • Making of changes, amendments, or trademark modification in connection with registered trademark in accordance with the recent advancement.
  • Non-use of registered trademark for more than 5 years by a registered proprietor.
  • Non-renewal of a original or previous Trademark registration.
  • A trademark can be expunged from a register in case registration is obtained by fraud. Particularly, where a registration has been obtained by suppression of material fact or false statement, it is known as a registration obtained by fraud.
  • The certain class of goods and services when included or added if it is against the business extent of registered trademark.
  • Non-conformity with one or other more grounds stipulated in Section 9 and Section 11 of the Indian Trade Marks Act of 1999.

Conclusion

Trademark modification is an additional burden on an applicant as well as on the registry. It can delay a trademark registration process as addition of an unnecessary processing period for the registration. Hence, the Trademark registration application will be filed with the utmost care in order to prevent any errors during the filing of an application.

To avoid any trademark modification or cancellation or removal of the registered trademark from the register, the proper precautions will be taken when filed and when it is renewed. Taking necessary measures to secure a distinctive character of the trademark and one must not abandon the mark.  

Read our article:An Overview on Document Required for Trademark Registration

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