Trademark registration in India is an essential step toward building a brand and its protection. Sometimes there is a possibility of errors in a trademark application. As a remedy for trademark amendment or trademark modification, there are provisions prescribed under the Trade Marks Act to rectify details submitted in the application. Modification of trademark is possible before trademark registration as well as post trademark registration.
Pre-registration Trademark Amendment
Before the trademark is registered, an applicant can file a request for trademark modification or trademark amendment by filing trademark form TM-M (Application/ Request for miscellaneous functions in respect of a trademark Application/ Opposition/ Rectification under the Trade Marks Act) with the supporting documents and applicable government fee. This is basically done when there is a correction of clerical error or for some minor trademark amendment required due to a mistake in filing and data entry. However, no substantial alteration or amendment in the application may be permitted which may substantially alter proprietor details, specification of goods and services as to the use of the mark.
The owners many times ask whether they can change the word mark, logo or colour specification in the logo. However, these changes fall under substantial changes and are therefore not allowed.
The permitted changes are more of a clerical error. For example, a wordmark “LegalWiz.in” is applied as “LegalWiiz.in” (with extra ‘i’) which is a data entry error on part of the applicant. Such changes are allowed but we cannot seek addition of a logo or its design in the same application. For that purpose, a fresh application is filed.
The substantiality of the requested trademark modification or trademark amendment is decided by the Registry itself considering the application, facts and supporting documents if any. Here, we are providing a general list of permitted and non-permitted trademark amendments.
Under the Trade Marks Act, the trademark amendment would be allowed if:
- Such amendment does not alter the use;
- The date of usage is not altered;
- Details regarding goods and services do not change with the amendment.
Permitted Trademark Amendment:
These changes do not alter the nature of the application. Changes like change in address of the applicant or in the service address, deletion or confinement of any item in the specification of goods/services, confinement/limitation in sales of goods/services, and division of multiclass application are permitted. In a case for change due to an error in data entry, the trademark officer after verification of the supporting documents corresponding to the request can make a change in the system along with the remarks to this effect. The registry may also direct for the amendments in applications filed after its examination.
Non-permitted Trademark Amendment:
Following is the list of trademark amendments that can substantially change the trademark application and therefore it is not allowed.
- Change of word mark, logo and its colour specification
- Change in User Date claimed
- Change of type of trademark – for example, an application filed for a wordmark cannot be changed to device or label
- Change in the class of trademark
- Change in trade description of the mark. These are a few examples where trademark amendment is not allowed. In such cases, the applicant can make a fresh application for trademark registration.
Pre-Registration Trademark Amendment Can Be Initiated By:
- Applicant – In a case where the applicant wishes to correct errors in a trademark application or change details related to the proprietor or agent.
- Registry – The trademark registry may send back the application for trademark amendment if any errors or omissions are found. Such applications are marked ‘Formalities Check Fail’ by the authority. In such cases, the Registrar sends the application back to the applicant along with the reasons why the application is not accepted for the next stage of Trademark registration. In such cases, the applicant should pursue a trademark amendment and fulfill the requirements mentioned in the formality check fail report.
Post-registration Trademark Amendment
Once the trademark is registered there are different provisions that govern the requests related to trademark amendment. For post-registration trademark amendment, the registered proprietor is required to file a Form TM-P with supporting documents and an applicable government fee.
Post-registration Trademark Amendment Can Be Initiated By: –
- Registered Proprietor – The Registered proprietor is the one who has received the trademark registration. Once a trademark is registered, the trademark registry does not raise any questions about the trademark. It is only the registered proprietor who can request a trademark amendment. For example, change in place of business, change in the name of the company under which the mark is registered etc. This is also permitted, and at the discretion of the registrar.
How to Amend a Trademark Application?
A request for trademark amendment can be filed by the applicant in the form TM-M (Application/ Request for miscellaneous functions in respect of a trademark Application/ Opposition/ Rectification under the Trade Marks Act) or TM-P (Application for post registration changes in the trademarks) with supporting documents. The trademark application can be filed online or physically by payment of the applicable government fees. The application once filed will be scrutinized by the trademark registry. Officer-in-charge may seek any clarification or supporting documentation to prove the genuineness of the application.
Below are some of the queries related to trademark amendment in India –
1. How to change the proprietor name in trademark application, in case of clerical error?
The proprietor name in the trademark application can be amended by filing trademark form TM – M at the Trademark Registry. If the proprietor wishes to make corrections to details related to the proprietor then they should pursue filing Form TM-M for ‘correction of clerical error or for amendment’ along with the requisite government fees.
2. How to change attorney of record trademark?
The details related to changing the attorney of record is possible before trademark registration as well as post trademark registration. The owner of the trademark can simply file Form TM-M with the applicable government fee for a change in details related to the agent’s name and address. Such requests can be raised online as well as offline.
3. How to change the email id in trademark?
Trademark Amendment related to change in email id is possible before registration as well as after trademark registration. The proprietor of the trademark can simply proceed with filing form TM-M along with requisite government fees to change email id.
4. How to change trademark logo?
Once a trademark application has been filed at the trademark registry, the applicant cannot request for changing the logo in a trademark application. A change in the graphical representation of the trademark may be possible if the trademark registry directs the applicant for the same. Further, a change as per the direction of the trademark registry may not be changing the overall look and feel of the trademark but remove some elements which may not be registered by the trademark registry.
Trademark Amendment becomes an additional burden on the applicant as well as the registry. Trademark Amendment delays the process of trademark registration. Therefore, an application for trademark registration must be filed with utmost care to prevent any errors during filing. In order to prevent trademark amendment or cancellation or removal of a registered trade mark from the register, proper precautions must be taken during its filing and getting it renewed from time to time, taking measures to secure the distinctive character of the mark and not abandoning the mark.
LegalWiz.in is a leading online legal service provider committed to offering simplified and hassle-free solutions to businesses and corporates across India. From company registration to trademark protection, we make managing and protecting the business simpler.
LegalWiz.in can help you with brand name registration in India online at an affordable cost. If you are seeking assistance from experts to register or to rectify your mark, feel free to get in touch with our expert at firstname.lastname@example.org.