Trademark Rectification:

Rectification refers to the act of fixing a mistake or error. The applicant may submit an application for trademark rectification if the registrar notifies them of an error during the application process or after the trademark has been registered. But the rectification of a trademark also includes any change or modification that the applicant wants to make in the trademark application or after getting the certificate of registration.

Whether the trademark is already registered or is yet to be registered, the applicant may submit a request for rectification at any time. Under the same facility, the applicant may also request the trademark's cancellation. If the applicant's registered trademark has not been used for five years and three months, the applicant may file a petition to have the mark struck off the list of registered trademarks.

The applicant must submit the trademark application correction in form "TM-16" along with the required payments. It is a legal procedure to address or correct a mistake or an omission that has been made after the Trademark Registration is done and has been recorded in the trademark register.

Who can file for Trademark Rectification?

• Any person aggrieved by the mark if the mark is looking similar to an existing mark.
• The proprietor of the trademark can himself record the error and file for rectification of error.
• It can be filed by any third person or other individual or entity being misled by that mark.

Grounds for Trademark Rectification in India
Section 57(1)

• Contravention or failure to observe a condition entered in the Register in relation to the registration of the mark.

Section 57(2)

• The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered mark.
• 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.
• Error or defect in any entry made in the Register.
• The entered mark was wrongly remaining on the Register i.e. it is contrary to some of the provisions mentioned in Section 9 and Section 11 of the Indian Trade Marks Act of 1999 of the Act or is likely to cause confusion amongst the public and trade.
• Not using registered trademark for over 5 years or more.
• Non-renewal of the previous trademark.
• When the renewal fee has not been paid.

How to prevent trademark rectification or cancellation in India?
A registered proprietor in order to prevent rectification or cancellation of a trademark in India shall:

• Renew their mark from time to time.
• Preserve the distinctive character of the mark and avoid it from becoming deceptive.
• Not keeping the mark unused for a period exceeding five years and 3 months from the date of registration of the mark.

Forums for Trademark rectification
Any person may make an application before the Registrar of trademarks or before the Appellate Board (IPAB), for removal of a registered trademark or for cancelling or varying the registration of the trademark and for rectification of the Register of trademarks, as such.

Section 58
On application made in the prescribed manner by the registered proprietor, the Registrar of trademarks may correct any error in the name, address or description or any other entry relating to the trade mark ;enter any change in the name, address or description of the registered proprietor; cancel the entry of a trade mark in the register; strike out any goods or classes of goods or services in respect of the registered mark and make consequential amendments or alterations in certificate of registration.

Section 57(4)
It 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.

Process of Trademark Rectification

• Submission of documents:
  The proprietor must submit the relevant application(s) along with the alterations required and relevant documents (depending on the alterations required) for supporting the alterations like identity proofs or address proofs.
   
• Drafting of the application:
  The applicant then needs to fill the relevant form with all the details.
   
• Filing of the form:
  The next step is to file the form with the Registrar along with the prescribed fees.
   
• Approval of government:
  The last step is approval by the Registrar and modification in the register as required. When the rectification is initiated by an aggrieved person, then the process is:
  The aggrieved person must apply in the relevant form (as set out above) along with the reason for rectification and submit it to the Registrar with the prescribed fees. - Then the Registrar will send notice to the proprietor of the trademark to file a counter statement - Both parties will have to file affidavits producing their evidence.
  
  The effect of rectification can be that after hearing the case presented by both parties, the Registrar or the Appellate Board can either cancel, vary, add or remove the entry. Trademark Act and Rules provide relief both to the applicant and aggrieved person to seek rectification or cancellation of the trademark.

Removal of registered trademark for non use
Section 47 - The application for this purpose may be made on either of the following grounds:

1. The trade mark was registered without any bonafide intention that it should be used in relation to those goods/services, and that there has in fact been no bonafide use of the trade mark up to a date three months before the date of the application, or
2. A continuous period of five years from the actual date of registration or longer has elapsed during which there was no bonafide use thereof up to three months before the date of the application. "Bonafide use" means use that is honest and genuine and "not pretended" - the substantiality of use judged by ordinary commercial standards, depending upon the nature and circumstances of the case, may be relevant to determine whether it was, in fact, bonafide.

The period of five years under section 47(1) will commence from the date on which the trade mark is actually entered in the register. This is different than the date of application for registration of the trademark being the date of registration in view of Section 23(1) of the Trade Marks Act 1999 However the registration may not be removed under this Section if:

1. A company is about to be formed & registered under the Companies Act and the registered proprietor intends to assign the trade mark to that company; or
2. Proprietor intends it to be used by a person to be registered as the registered user, after the registration of the mark.
3. If alleged non-use of a trade mark is due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates.

Case Law
Country Inn Pvt. Ltd. v. Country Inns and Suites by Carlson Inc.& Anr. - Delhi High Court [April 23, 2018]
The defendant, a registered owner of "the trademark COUNTRY INN & SUITES BY CARLSON," submitted a written statement claiming invalidity of the registration of the plaintiff's trademark in this case for infringement of the plaintiff's registered trademark "COUNTRY INN filed in 2008".

In 2017, it asked the Intellectual Property Appellate Board to correct or dismiss the proceedings involving the plaintiff's logo. It then submitted a second motion to the High Court asking for permission to pursue them and a suspension of further proceedings in the infringement and passing-off lawsuit until they were resolved.

However, the court dismissed the motion with a fee of Rs. 2 lakhs, citing the Supreme Court's ruling in the Patel Field Marshal Agencies case and finding it to be frivolous, "mala fide," and a "abuse of the judicial process." In light of the fact that these procedures were filed seven years after the date of the framing of issues, the court decided that the defendant is presumed to have abandoned its right for bringing rectification proceedings.

Conclusion
The rights and provisions for trademark rectification and cancellation in India are found in Chapter VII of the Trade Marks Act of 1999. Typically, a request for trademark rectification is made by the registered trademark's owner. The term "rectification of trademark" refers to the trademark owner making any alterations or improvements to the previously registered trademark.

However, any other person or organization that is harmed by its unfair use may also bring this claim. The justifications for why the mark should be stopped from further processing must be included in the rectification form submitted to the trademark examiners. Once the examiner is happy with the provided justifications, correction is made.

References

• https://enterslice.com/learning/trademark-rectification-in-india-procedures/
• https://ssrana.in/ip-laws/trademarks-in-india/trademark-rectification-india/
• https://www.lexology.com/library/detail.aspx?g=1e34a836-5c38-484a-9079-62751b8bad2f
• https://corpbiz.io/trademark-rectification
• https://www.onlinelegalindia.com/blogs/rectify-a-registered-trademark
• https://cleartax.in/s/trademark-rectification-procedure