If any person is aggrieved by an entry wrongly made or wrongly remaining on the register of trademark, he is entitled to file a petition for cancellation of registration or rectification of the register for removal of the registered mark. Rectification of the register is a proceeding in which a party seeks to remove a registered trademark from the register. In India, Section 47 of the Trademarks Act lays down two scenarios regarding removal of a registered trademark namely:
- If it is proved that the trademark was registered without any bona fide intention of use on part of the owner. Quite often, as part of trademark searches that we conduct prior to filing, we come across applications which have been filed in all the 45 classes although the mark is actually used for one or two classes only. This is termed as defensive registration and the court has held in various cases that such registrations should not be encouraged. Therefore, if a person proves that the applicant has no intention of actually using the mark with respect to the products and services the mark has been filed with respect to, a petition for cancellation can be filed for removal of the mark from the trade register.
- If the trademark has not been used for a continuous period of 5 years from the date of registration of the mark and three months prior to filing the application for registration. In effect, if the mark has not been used for a period of 5 years, then any aggrieved person may file a petition for the rectification of registration for the removal of the registered mark from the trade register. In the present case, even if there was some initial usage of the mark, if the mark has not been used for a continuous period of 5 years after registration of the mark, then an application for rectification can be filed. An application for rectification of a registered mark can also be filed in the mark has been wrongly registered or may have remained on the register even after its expiry.
Alonika.in is having a team of expert Lawyers having vast knowledge and practical experience of Trademark law’s, represent matters in tribunals and courts and well versed in drafting and filing trademark rectification notice and reply.
For further information on filing an application for cancellation/rectification please contact.
- Trademark application no of Applicant
- Trademark application no on which rectification is to be filed
- KYC of Applicant
- Drafting of Documents (POA)
- Drafting of Trademark rectification notice / reply
- Drafting of application for Trademark rectification / reply
- Filing of Trademark rectification application / Counter statement
Frequently Asked Questions
Is Trademark Search important?
What is Trademark Classification?
Can a Trademark be filed in many classes?
Does Trademark Registration provides monopoly in a trademark class?
Who can file a Trademark?
Who should be appointed for Trademark filing?
I have a Registered trademark in a class can I use priority claim in other class?
Products / Services falling in multiple class, should it be filed for all the relevant classes or should be filed in a particular class?
Trademark remains valid for life long?
Can an expired Trademark be renewed or restored?
Any person is using similar Trademark, is there any option available?
I am selling garments online, which class of trademark I should apply?
Is the Registration Certificate generated online valid for Legal purpose or filing trademarks abroad?
What should be filed first Word mark or Device Mark?
- Uttam Chemical Udhyog v Shri Rishi Lal Gupta trading as Rishi Soap Works, 1981 PTC 137(Del).
- Registrar of Trade marks v Ashok Chandra Rakhit Ltd. AIR 1955 SC 558 : (1955) 2 SCR 252.
- Three-N-Products Pvt Ltd v Emami Limited, 2009 (41) PTC 689 (Cal).
What is trademark registration?
How to get Trademark registration?
How much it cost to get a trademark registration?
What is trademark Infringement?
Is a trademark registration valid for all types of goods and services?
What is the validity of trademark registration?
Documents and details required for trademark registration in India?
- Some common details for every type of applicant is as follow:
- Brand name
- Product details
- Using Date details
- Registration / Incorporation certificate of firm
- For Individuals / Proprietor:
- Government issued I’d.
- For Company / Partnership / LLP/ Society / Trust / NGO etc.
- Resolution Passed in meeting.
- KYC of authorized person as per resolution.
- Certificate of registration under MSME (if registered).
- Certificate of registration under Startup (if registered).
- KYC of all the Directors / Partners / Members / Trustee.
I have a registered company for my company name do I still need trademark registration?
When I can use symbol R or TM?
Will my trademark registration be valid worldwide?
What is trademark objection?
Why is Trademark status shown as Formality Check Fail?
Trademark application status shown as “SENT BACK TO EDP”
What does it mean when my trademark status shown as “MARKED FOR EXAM”
What does it mean when my trademark status shown as “OPPOSED”
What if my Trademark is taken but in different Trademark class
What is Trademark assignment?
- Complete Assignment to another entity- The owner transfers all its rights with respect to a mark to another entity, including the transfer of the rights such as right to further transfer, to earn royalties, etc. (E.g. X, the proprietor of a brand, sells his mark completely through an agreement to Y. After this X does not retain any rights with respect to the brand)
- Assignment to another entity but with respect to only some of the goods/ services- The transfer of ownership is restricted to specific products or services only. (E.g. P, the proprietor of a brand used for jams and jellies and dairy products. P assigns the rights in the brand with respect to only dairy products to Q and retains the rights in the brand with respect to jams and jellies.) This is called partial assignment.
- Assignment with goodwill- Such assignment is where the rights and value of a trademark as associated with the product is also transferred to another entity.(E.g. P, the proprietor of a brand \"Shudh\" relating to dairy products, sells his brand to Q such that Q will be able to use the brand \"Shudh\" with respect to dairy products as well as any other products it manufactures.)
- Assignment without goodwill- Such assignment also referred to as gross assignment, is where the owner of the brand restricts the right of the buyer and does not allow him to use such brand for the products being used by the original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand, is not transferred to the buyer. (E.g. P, the proprietor of a brand \"Shudh\" relating to dairy products, sells his brand to Q such that Q will not be able to use the mark \"Shudh\" with respect to dairy products but can use this brand for any other products being manufactured by it. In such case the goodwill which is associated with brand \"Shudh\" for dairy products is not transferred to Q and Q will be required to create distinct goodwill of brand \"Shudh\" for any other product or service like Restaurant wherein Q proposes to use this brand.). In many jurisdictions like United States, assignment of mark without goodwill is not allowed at all. India on the other hand allows assignment without goodwill.
- Restriction on assignment that results in the creation of exclusive rights in more than one persons with respect to the same goods or services, or for same description of goods or services or such goods or services as associated with each other.
- Restriction on assignment that results in different people using the trademark in different parts of the country simultaneously.
What is Trademark Licensing?
What is Trademark Rectification or Cancellation?
Grounds for Trademark Rectification in IndiaSection 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.
Trademark classes and their Classification in India?
Classification of goods
- In the case of finished goods, it is classified according to it’s purpose or function. If the function is not mentioned, then the user can classify it by analogy with other comparable finished products (mentioned in the alphabetical list). And even if this is not possible, then an applicant can classify on the basis of the material of which the product is made or it’s mode of operation.
- In the case of multi-purpose finished goods, it could be classified on the basis of any of it’s functions. If the function is not mentioned, then it could be classified on the basis of the material of which the product is made or it’s mode of operation.
- In the case of raw materials, whether unworked/semi-worked, they are classified on the basis of the material they consist of.
- In case a product is made using different materials, then it is classified on the basis of the material that predominates.
- Any good that forms part of another product is in principle classified in the same class as that product only when the same type of goods cannot normally be used for another purpose. In any other case, the first point mentioned above applies.
Classification of services
- The principal basis on which the services are classified is according to the branches of activities specified in the headings of the service classes and in their explanatory notes. And if this is not the case, then this is done using other services mentioned in the Alphabetical List.
- In the case of any rental services, the classification is in the same class as the ‘services provided by means of rented objects’.
- Any service that provides advice, information, or consultation is classified in the same class as in the case of matter of the advice, information, or consultation.
|Classes||Category of trademarks|
|Class 1||Any kind of Chemicals that are used in Industries, science or photography, even chemicals used in agriculture, horticulture and forestry, also the adhesives used in Industry, unprocessed plastics, chemical substances involved inedible substances.|
|Class 2||Any kind of paints or varnishes, any preservative used against rust and damage of wood, metals used in foil and powder form used by painters, decorators or printers, even mordant and colorants|
|Class 3||Substances used in laundry, also cleaning and polishing; and has chemical applications, soaps, perfumes, oils, any kind of cosmetics|
|Class 4||All industrial greases and oils, any kind of lubricants, wetting or binding compositions, all fuels and candles and wicks.|
|Class 5||Medical preparations (Veterinary and Pharmaceutical, including sanitary preparations also, any dietetic substance), baby food, plasters, dressing material, disinfectants, dental wax, preparations to destroy vermin.|
|Class 6||Common Metals and alloys, any material used for metal building; non-electric cables and wires (all of the common metals), pipes and tubes, and other small metal hardware, also ones are included|
|Class 7||Machines and their tools, motors or engines (land vehicles not included), incubators (for eggs), and agriculture machines (hand-operated not included).|
|Class 8||Hand tools, cutlery, razors, and sidearms.|
|Class 9||Any instrument and apparatus used in science, navigation, Photography, Cinematography, optics, weights and measurements, signals, supervision, life-saving and/or teaching, also conducting, transforming, switching, regulating, transmitting or reproduction of sound or images; any kind of magnetic data carriers or recording discs, vending machines(automatic) and any coin-operated apparatus; computers, cash registers, calculating machines and fire-extinguishing apparatus.|
|Class 10||Any kind of medical apparatus including surgical, dental and veterinary instruments and apparatus, artificial limbs or eyes or teeth; Orthopedic articles also included.|
|Class 11||Any lighting, steam generating, heating, drying, cooking, refrigerating, ventilating, sanitary or water supply related appliances and apparatus.|
|Class 12||Vehicles and apparatus for locomotion (in/by land, air or water)|
|Class 13||Fireworks, Firearms, Explosives, and ammunition (also projectiles).|
|Class 14||Any precious metal and its alloy and any goods made of that precious metal or even coated with, jewels and ornaments and precious stones; also chronometric instruments.|
|Class 15||Any Musical Instrument|
|Class 16||Cardboard and paper; any goods made from them; printed matter, photographs and all stationary given that they are not included in any other classes, adhesives (at the household level), paintbrushes, office requisites; teaching material (excluding any kind of apparatus), printing blocks and plastic material for packaging.|
|Class 17||Rubber, mica, gutta-percha, asbestos, gum, and any goods made from these, packing, insulating and stopping materials, extruded plastics, pipes (flexible and not made up of metals).|
|Class 18||Leather any kind of its limitation, any goods from this material, trunks, hides, animal skins, and traveling bags; parasols, umbrellas, and walking sticks also harness and whips.|
|Class 19||Non- metallic building materials, rigid pipes again non-metallic and used for building purposes; bitumen, asphalt, and pitch; monuments, not of metal.|
|Class 20||Mirrors, furniture, picture frames; any goods of wood, reed, cork, wicker, cane, bone, horn, whalebone, ivory, amber, shell, meerschaum, mother-of-pearl or any kind of their substitutes, also plastics given that they are not included in any other class.|
|Class 21||Household utensils and containers (including kitchen), sponges and combs; brushes(excluding paint brushes) and materials included in their making; steel wool and unprocessed glass, porcelain and glassware; also earthenware.|
|Class 22||“Tents, nets, strings, ropes, tarpaulins, awnings, sacks, sails, bags (which are excluded from other classes); stuffing and padding materials; raw textile materials (fibrous).|
|Class 23||Threads and Yarns (textile use).|
|Class 24||Textile and their goods; bed covers and table covers.|
|Class 25||Footwear, clothing, and headgear.|
|Class 26||Ribbons, Embroidery, Lace, and braid; hooks and buttons, needles and pins; artificial flowers.|
|Class 27||Mats, rugs, carpets and matting, linoleum, and other similar materials used for covering existing floors and also wall-hangings which are non-textile|
|Class 28||Sporting and gymnastic articles; games and any kind of playthings given that they are not included in other classes and also decorations for Christmas Trees.|
|Class 29||Fish, meat, poultry; meat extracts; dried, cooked, frozen edibles (fruits and vegetables), jellies, jams; eggs, milk, and its products, oil (edible).|
|Class 30||“Tea, coffee, rice, sugar, tapioca, artificial coffee, and sago; bread, flour, pastry and confectionery; honey, ices, yeast, treacle, salt, baking powder, mustard, sauces, vinegar, spices, and ice.|
|Class 31||Products from agriculture, forest and horticulture, and grains gave that they are not included in other classes; fresh vegetables and fruits; live animals; seeds; plants and flowers (natural); food product for animals|
|Class 32||Mineral and aerated water; Non-alcoholic drinks and beers; fruit juices and drinks; syrups and preparation for beverages.|
|Class 33||Alcoholic drinks (excluding beers).|
|Class 34||Smoking articles, Tobacco, and matches.|
|Class 35||Business Management; advertising; business administration and other office functions.|
|Class 36||Financial affairs, Insurance; Monetary affairs; real estate affairs.|
|Class 37||Repair, Building construction, Installation Services.|
|Class 39||Packaging and storage of goods; Transport.|
|Class 40||Treatment of Materials.|
|Class 41||Providing training; Entertainment; sporting; Education and other cultural activities.|
|Class 42||Technological and scientific services; industrial analysis and research services; development of computer hardware and software and their design.|
|Class 43||Services related to providing drinks and food or temporary accommodation.|
|Class 44||Any kind of Medical services (including Veterinary, hygienic, and beauty services) both for humans and animals; horticulture, agriculture, and forest services.|
|Class 45||Legal and security services; personal and social services.|