Trademark registration in India is an essential step towards brand building and its security. Sometimes the application for TM registration is susceptible to errors and mistakes. As a remedy for rectification of error or omission, there are provisions prescribed under Trade Marks Act to rectify details submitted in application. Rectification of trademark is possible prior to registration and post registration as well.
Before the trademark is registered, an applicant can file a request for correction or amendment of a trademark application by filing trademark Form TM-M along with the prescribed fee and supporting documents. This is basically done when there is correction of clerical error or for a minor technical amendment required due to a mistake in filing and data entry. But no substantial alteration or amendment in 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 or the logo or colour specification in logo. However, these changes fall under substantial changes and therefore not allowed. The permitted changes are more of clerical error. For example, a word mark “LegalWiz.in” is applied as “LegalWiiz.in” (with extra ‘i’) which is a data entry error on part of applicant. Such changes are allowed but we cannot seek addition of logo or its design in the same application. For that purpose, a fresh application is filed.
Whether the sought change is substantial or not 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 changes.
Under the Trade Marks Act, the changes would be allowed if:
- The amendment does not alter the use;
- The date of usage is not altered;
- Details regarding goods and services must not change with the 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, division of multiclass application is permitted. In case of change due to an error in data entry, the trademark officer after verification of relevant document can make a change in the system along with the remarks to this effect. The registry may also direct for the amendments in application filed after its examination.
Changes like following will alter the substantial nature of the 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 word mark cannot be changed to device or label (As discussed with example above.)
- Change in class of trademark
- Change in trade description of mark – here the registry may direct the changes in few situation but whether to adopt the changes sought by the applicant is the discretion of the registry
These are few of examples where rectification is not allowed. In such case, the applicant can make a fresh application of registration.
Pre-registration rectifications can be initiated by:
- The applicant himself: in situations he/she wants to clarify or correct an error made while filing the application.
- The registry: The registry might send back the application for rectification if any errors or omissions are detected. Such applications are marked ‘Formalities Check Fail’ by the authority. 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. The applicant can rectify the Trademark application and re-submit it with the Registrar.
Once the trademark is registered there is a different provision that governs the alteration of registered trademarks. The registered proprietor needs to file TM-P along with the modified / amended trademark depicting how the trademark would appear after the modification.
In case there are certain amendments that are required after the trademark has been registered, then the corrections can be initiated by:
The applicant himself: in situations he/she wants to correct errors and certain details through amendment. For example, change in place of business, change in the name of the company under which the mark is registered under etc. This is also permitted, and the discretion of the registrar.
Trademark Rectification Procedure
The rectification application can be filed by applicant in concerned form i.e. TM-M or TM-P with supporting documents. The mode of application can be online or physical filing by payment of prescribed fee. The application once filed will be scrutinized by the registry. Officer-in-charge may seek any clarification or supporting document to prove the genuineness of the application.
Rectification becomes an additional burden on the applicant as well as the registry. It also delays the trademark registration process adding the unnecessary processing period for the registration. Therefore, the TM registration application must be filed with utmost care to prevent any errors during filing. In order to prevent the rectification 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 leading online legal service provider committed in 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.