RECTIFICATION OF TRADEMARKS

Removal for non-use

Sec.47 – by any aggrieved person to the Registrar on grounds that:

a)      Registered without bona fide intention to use.

b)      Upto 3 months before the date of application, a continuous period of 5 years has elapsed from date on which the trade mark was entered in the register during which no bona fide use has been made. 

Rectification for other grounds

Sec.57 - by any aggrieved person to the Registrar on grounds that:

a)      Failure to observe a condition on the register

b)      Absence or omission from the register of any entry

c)       Entry made without sufficient cause

d)      Entry wrongly remaining on the register

e)      Error or defect in any entry

Procedure for application to Registrar

1.       Application in Form TM-26 or Form TM-43 for collective/certification marks.

2.       Statement in triplicate setting out the nature of the applicant’s interests, facts of case, relief he seeks.

3.       In case there are registered users, application and statements shall be accompanied with as many copies as there are registered users.

4.       Copy of the application and statement to be ordinarily transmitted within one month by the Registrar to the registered proprietor and to each registered user and any other person who has an interest in the mark.

5.       Application shall be verified.

6.       Within 2 months from the receipt by the registered proprietor of the copy of the application, or such further period not exceeding one month in the aggregate, registered user shall send a counterstatement in TM Form 6 in triplicate stating grounds on which the application is contested.

7.       Rule 50-57 apply thereafter:

a)      Evidence in support of opposition: within two months from service of counterstatement, and such further period not exceeding one month in the aggregate. Extension of time of one month may be taken in TM Form 56.

b)      Evidence in support of application: within two months from service of affidavit of opposition, and such further period not exceeding one month in the aggregate. Extension of time of one month may be taken in TM Form 56.

c)       Evidence in reply by opponent: within one month of receipt of applicant’s affidavit or within such period not exceeding one month in the aggregate. Strictly in the form of a reply. May take extension of one month in TM Form 56.

d)      No further evidence, but Registrar may give leave to either applicant or opponent to give any evidence.

e)      Copies of exhibits and affidavits to be sent to the other party.

f)       Attested translation of documents, if not in English or Hindi.

g)      Notice of hearing shall be given ordinarily within 3 months of completion of evidence. Within 14 days of receipt of notice, any party intending to appear shall notify the Registrar in TM Form 7.

h)      Hearing may be adjourned for sufficient cause.

i)        If applicant isn’t present on adjourned hearing, application may be treated as abandoned.

j)        Registrar to take on record the written arguments.

k)      Decision of Registrar to be notified to parties in writing.

8.       Registrar to not rectify or remove merely because no counter is filed unless he is satisfied that the delay is wilful.

9.       Any third party, may apply in TM Form 27 for leave to intervene, stating the nature of his interest, and Registrar may refuse or grant such leave.

Rectification by Registrar of his own motion

Registrar may  send notice to the registered proprietor and to each registered user and to any other person who has interest, stating the grounds on which he proposes to rectify, and shall also specify the time, not being less than one month from the date of notice, within which an application for hearing shall be made. If a person does not set out facts upon which he intends to meet the grounds or applies for hearing, he may be treated as not desiring to take part in the proceedings. If the Registrar decides to rectify, he shall communicate his decision in writing.