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Trademark Rectification
Challenge Registered Mark

Did you notice that someone else has wrongly registered your trademark? We help you in making an application for cancellation of such a mark. Note that the rectification can be filed within five years of registration of an impugned trademark.
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Challenge Dishonest Trademark Registration

We offer world-class & reasonably priced Trademark Services through the best of attorneys on our panel.

Whats’s Included:

  • Consultation
  • Eligibility Check
  • Drafting of Rectification Petition
  • Vetting by Expert Attorney
  • Filing of TM Rectification
  • Application Tracking

Pricing Starts

₹ 14,999 + Govt Fee/Gst

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Overview of Trademark Rectification Process

  • Purpose
Formal application to the Registrar of Trademark for removal of a Registered Trademark obtained dishonestly by someone else and the applicant has a valid claim.
  • Limitation
The rectification application can be filed within five years of registration of the impugned mark.
  • Process
Drafting of petition to the Trademark Registrar and online filing of the same
  • Prescribed Form
Form TM-O
  • Approval
The trademark registrar passes an order after hearing both parties.
  • Timeline
Approx Six Months
  • Govt Fee
INR 2700/-
  • Prof Fee
Varies in each case.
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What is Trademark Rectification

Did you notice that someone else has dishonestly registered a trademark similar to yours? There is a legal way to challenge such a dishonest trademark registration under the Trademark Act by making a Trademark Rectification application to the registrar of trademarks. We help you draft the trademark rectification petition and file it with the Registrar of Trademarks.

Key Facts

Formal Challenge to Registered Mark

File within 5 Years of registration

Both Parties are heard

Economic in comparison to other options

Online filing and Hearing Process

Trademark Rectification

How Setindiabiz help!

The setindiabiz could help you manage and monitor your trademark to identify potential infringement. We will provide the trademark experts associated with us to assess your claim and who, on your instructions, will take further steps whatever is required in your matter.

Legal Provisions Concerning Trademark Rectification

Sections 47 and 57 of the trademark provide for the rectification and removal of a trademark that the office of the trademark registrar inadvertently registers. The grounds for removal of the registered trademark through the process of rectification would be cases where the trademark is not put to use after the granting of registration or cases where the trademark is obtained by fraud, misrepresentation or any other dishonest representation. Under the trademark act, the registrar or trademark is empowered to remove, rectify or limit the scope of the trademark on an application seeking trademark rectification in a just and fair case.

Grounds of Filing Trademark Rectification

The legal framework for Trademark Rectification provides for the cancellation, registration, or removal of trademarks from the register of trademarks. It also provides for the correction of minor errors or typographical errors. The following are the grounds on which a trademark rectification application may be filed.

Removal for Non-Usage

A registered trademark could be removed on the grounds of non-use coupled with a lack of bonafide intention to use or due to non-use for a continuous period of five years.

Cancellation of Registration

Typological errors in the name and address of the registered proprietor and in the description of goods and services can be corrected.

Alteration of Trademark

Alteration in the registered mark is allowed to the extent it does not alter the essential character of the mark itself.

Correction of Typographical Errors

The registration of the mark may be cancelled or varied if it is granted by mistake or obtained by fraud or misrepresentation.

Process of Filing Trademark Rectification Application

  • step-1
    Eligibility Check

    Any aggrieved person, including a consumer, competitor, or bonafide user of a trademark, may challenge a registered trademark of someone else by making a Trademark Rectification application within five years of registration of the Impugned Mark. Therefore, make sure that your trademark usage is prior to the impugned mark and that the trademark registration of the opposite party is displeased or wrongly obtained.

  • Step-2
    Drafting of application

    As the key to a successful challenge is the quality of the Rectification Petition, it is essential to collect all possible evidence of prior use or other material to establish your bona fide claim on the trademark and share maximum material with your attorney, which will help in Drafting the petition.
    The rectification petition or the application must be drafted diligently, representing the applicant’s interest in it and setting out the grounds of cancellation/removal/ correction with proper documentary evidence pointing out the details of incorrect entry and the nature of the error or defect to rectify/remove.

  • Step-3
    Filing of Trademark Rectification Application

    Section 57 of the Trademark Act provides for filing of the Trademark Rectification petition to request for removal or alteration of a registered trademark. The online application should be supported with detailed grounds on which the applicant relies. The government filing fee for prescribed Form TM-O is ₹2700 at present. In alternative to the petition before the Registrar of Trademarks, the applicant may also move to the High Court having jurisdiction.

  • Step-4
    Filing evidence in support of grounds of rectification

    If the registrant has filed its counter to the rectification/ removal application within the prescribed time of two months from the receipt of the application, the applicant must file its evidence and rejoinder to the registrant evidence if any filed by the registrant

  • Step-5
    Attend hearing fixed in the matter of rectification

    Once the evidence stage is completed, the hearing will be fixed by the Registrar in the matter of rectification/removal application. These hearings, fixed from time to time, need to be represented for the final decision on the said application.

  • Decision of Registrar of Trademarks

    The Trademark Registrar would decide the petition after allowing a personal hearing and shall pass an appropriate order. If the decision is not in favour of the applicant, the option of filing an appeal against such a decision is open. We will help you in filing an appropriate appeal.

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Best Practices: Issue of Cease & Desist Notice First

Once an error, omission or defect in registration is identified, the aggrieved party must take immediate steps to redress the issue, as a delay in it may affect the outcome and overall integrity of the Register of Trademark. Consult an experienced trademark attorney to assess your claim, provide the required evidence and facts to ensure correct documentation and maintain clear records. The ideal steps could be as follows:

Application

Cease & Desist Notice of Trademark

Evaluate the option for issuing cease and desist notice to stop unauthorised use. Often the issue could be resolved through these notices prior to taking legal action as it provides an opportunity to the offending party to comply voluntarily . Further to this, it is a valid proof the aggrieved party took steps to redress the issue before resorting to legal action.

Court/Legal

File trademark rectification application

After expiry of the timeline of cease and desist notice, file the rectification as early as you can. If advised by the attorney on the assessment of your claim, file the rectification and follow the process detailed above. In Practice, the grounds of non-use under Section 47 and the rectification under Section 57 may be invoked together.

Frequently Asked Questions

1. What should I include in a cease & desist notice?

A cease & desist notice should include the grounds for defect in an application, a statement as to infringement/passing off, if any, the legal rights of the aggrieved party, a clear demand to stop an activity , and a deadline to comply with such demand.

2. What happens if the recipient of a cease & desist notice does not comply?

If the recipient does not comply, you may need to consider further legal action, such as filing an application for rectification or filing a lawsuit or both depending on the facts and circumstances of each case.

3. What is the difference between the Removal of the Trademark and filing of rectification for cancellation of the mark?

Although both the removal application and rectification for cancellation of the mark is filed in case of registered trademark, Removal is filed for non uses specified under section 47 of the Act whereas cancellation is filed for fraud or misrepresentation which could be coupled with non uses.

4. What is trademark rectification?

Trademark rectification is the process provided under trademark act for correcting errors or omissions in the record of trademark register. It includes cancellation of trademarks obtained through misrepresentation, fraud, or without sufficient cause. The fraud could also lead to wrongful usership claims.

5. Do I need to file separate applications for the same trademark registered in different classes by the same proprietor?

Yes, each application will have different facts as it pertains to different classes of goods/services and is to be evaluated separately based on the available facts.