Trademark Rectification / Cancellation

Trademark rectification is a proceeding to remove, cancel or vary an entry on the trademark register. It's used to cancel a registered mark on grounds such as non-use, wrongful or bad-faith registration, or to correct genuine errors in the register.

When you're challenging someone else's registered mark (for example, a mark that's blocking yours), rectification is a contested proceeding with petition, evidence and hearing — more involved than an opposition. When you're correcting your own entry, it's administrative.

Section 57 is the general power, and it has two limbs. Section 57(1): on application in the prescribed manner by any person aggrieved, an order may be made "for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto." Section 57(2): any person aggrieved by the absence or omission of an entry, by an entry made without sufficient cause, by an entry wrongly remaining on the register, or by any error or defect in an entry, may apply for an order making, expunging or varying the entry. Section 57(3) lets the deciding authority resolve any question necessary or expedient to decide in connection with the rectification.

Both limbs run to either the Registrar or the High Court — the applicant chooses. Following the Tribunals Reforms Act, 2021, which substituted "High Court" for "Appellate Board" with effect from 4 April 2021, section 57 reads throughout as "Registrar or the High Court, as the case may be". Jurisdiction is concurrent. Which forum suits a matter is a strategic question, not a procedural one, and it is worth deciding deliberately rather than by default.

And the Registrar can act without anyone applying. Section 57(4) provides that the Registrar or the High Court, of its own motion, may make an order under 57(1) or 57(2) — but only "after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard." Section 57(5) requires an order of the High Court rectifying the register to direct that notice be served on the Registrar, who shall then rectify the register accordingly.

Non-use is a different section with a much more exact test. Section 47(1)(b) allows removal where, "up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being." Two anchors do the work: the five years runs from actual entry in the register, not from filing; and the period is measured up to three months before you apply, not up to the date you apply. Section 47(1)(a) is the parallel ground — registration without any bona fide intention to use, plus no bona fide use up to three months before the application.

The defence to a non-use claim is narrower than it sounds. Section 47(3): an applicant "shall not be entitled to rely" for the purposes of 47(1)(b) or 47(2) on non-use "which is shown to have been 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." The Act's only illustration of "special circumstances in the trade" is a legal or regulatory restriction on use in India; the word is "includes", so the category is not closed, but nothing else is defined. And note what section 47(3) does not protect against — it reaches 47(1)(b) and 47(2) only, not 47(1)(a).

Two provisions rescue a proprietor defending non-use. Section 56(1) deems application of a mark in India to goods for export, or in relation to services for use outside India, to constitute use of the mark "for any purpose for which such use is material under this Act" — which reaches section 47. Section 48(2) deems permitted use by a registered user to be use by the proprietor for the purposes of section 47. Section 55(1) separately allows the deciding authority, where use must be proved, to accept use of a registered associated mark, or of the mark with additions or alterations not substantially affecting its identity, as an equivalent.

Correcting your own entry is much simpler, and cheaper. Section 58(1) lets the registered proprietor apply to the Registrar to correct an error in the name, address or description of the proprietor or any other entry relating to the mark; to enter a change in the name, address or description; to cancel the entry of a mark; or to strike out goods, classes of goods or services from those the mark is registered for — with any consequential amendment to the certificate, which the Registrar may require to be produced. Section 58(2) lets a registered user apply to correct or change its own name, address or description, after notice to the registered proprietor. Both are Registrar-only and both are discretionary ("may").

Altering the mark itself is section 59, and the limit is strict. The registered proprietor may apply for leave to add to or alter the mark "in any manner not substantially affecting the identity thereof", and the Registrar may refuse leave or grant it on terms (59(1)). The Registrar may advertise the application where it appears expedient, and where an opposition is filed in time shall decide the matter after hearing the parties if required (59(2)); and where leave is granted, the altered mark shall be advertised unless it was already advertised under 59(2) (59(3)). Section 60 deals separately with adapting entries to an amended classification, and 60(1) forbids an amendment that would add goods or classes, or antedate the registration.

We assess the grounds, prepare the petition and evidence, and represent the matter. Where the mark you want to stop has been advertised but not yet registered, opposition is the cheaper and faster route and it closes four months after advertisement.