Name: Ananya Dwivedi
Institution: Amity University , Noida
Introduction:
Under trademark law, the ideas of trademark cancellation and rectification are essential safeguards that guarantee that only genuine and authentic marks are listed in the register. These regulations are essential to maintaining the fairness, correctness, and integrity of the trademark system in India and are governed by the Trade Marks Act, 1999. Cancellation is the process of removing a registered trademark from the register, frequently due to non-use, incorrect registration, or any other reason specified by the Act. Rectification is the process of fixing a mistake or shortcoming in a registered trademark’s details.In addition to facilitating the Registrar’s adjustments, these laws allow parties who feel wronged to object to marks that are invalid or incorrectly registered. Both serve to preserve the integrity of fair competition in the market, prevent consumer confusion, and protect the rights of legitimate trademark owners.
Meaning:
Trademark cancellation and rectification refer to legal actions taken under the Trade Marks Act to contest the legality or accuracy of a registered trademark. A trademark is typically cancelled when it is removed from the register for reasons such as non-use, incorrect registration, or registration acquired through deception or fraud. It may be initiated by the Registrar suo moto in some circumstances or by any person who feels wronged. Correcting errors or deficiencies in the trademark registry, such as inaccurate information about the proprietorship or mark, or any modification that affects the parties’ rights, is known as rectification.Both rectification and cancellation prevent any abuse of trademark rights and ensure that the trademark register is fair, up-to-date, and accurate. These clauses fulfil the essential function of protecting the public’s and real proprietors’ interests as well as maintaining the integrity of the trademark system.
Cancellation of Trade Mark:
Indian law defines trademark cancellation as the act of removing a registered trademark from the Registrar of Trade Marks’ register of trademarks. Sections 47, 57, and 125 of the Trade Marks Act of 1999 include the majority of the provisions governing this.
Legal Grounds for Cancellation of Trade Mark:
which, in general, fall under the Act’s Sections 47 and 57.
A. Trademark removal for non-use under Section 47
Any person who feels wronged may apply to have a trademark revoked for non-use, according to this provision.
Section 47: (1) Clause (a) grounds: The trademark was registered without a legitimate intent to utilise it In the event that the trademark was registered without a legitimate purpose to use it and Three months prior to the filing of the cancellation application, the trademark had not been utilised.
(2) Clause (b): Constant non-use for a duration of five years
if the trademark hasn’t been used consistently for five years and three months after the registration date and before the application was submitted.
Use needs to take place in India.
Exception: Cancellation is not allowed in the event that non-use results from exceptional trade circumstances (such as import bans, war, or legal restrictions).
B:Section 57 grants the authority to modify or cancel registration for further grounds.
Any individual who feels wronged may apply to the Registrar or High Court in accordance with this clause in order to change or cancel a registration.
One of the following explanations is that the mark is either improperly registered or shouldn’t be on the register.
Registration error: This category includes procedural or secretarial errors.
breach of the Act’s provisions.
In bad faith, or by someone who wasn’t the rightful owner, Mark was registered.
C. Section 125: Rectification as a defence in a lawsuit for infringement
If a defendant in an infringement lawsuit argues that the plaintiff’s mark was registered incorrectly, he may request rectification or cancellation.
Instead of the Registrar, the High Court will need to hear this application.
2. To whom may a petition for cancellation be submitted?
It is possible for any “person aggrieved” to submit a cancellation petition.
Among them are:
enterprises that are negatively impacted by the registered trademark, such as competitors.
Anyone has a legitimate interest in the trademark not being registered.
Implications of Cancellation:
When cancelled:
The trademark has been taken from the registration.
The mark’s exclusive usage rights are forfeited by the registered proprietor.
Unless otherwise prohibited, it becomes accessible for others to use or register.
Grounds for Ractification of Trade Mark:
The particular causes are as follows:
1. Insufficient Justification for Registration [Section 57(1)]
In the event that the trademark was registered under the following absolute or relative grounds:
(Absolute grounds: failure to be generic, descriptive, distinguishing, etc.) Section 9
Section 11 (Relative grounds: past comparable mark, danger of misinterpretation)
Example: A trademark that has been registered for a descriptive term, like “Sweet & Cold” for ice creams, may be contested.
2. Not Using a Trademark [Section 47]
It is possible to cancel a registered trademark if:
It was registered without a legitimate purpose, or
It hasn’t been used for five years in a row since the registration date.
Case Law: Union of India v. Tata Iron & Steel Co. Ltd.: non-use results in trademark registration being revoked.
3. Fraud or misrepresentation to obtain registration [Section 57(2)]
Restitution is possible if the registration was obtained through deliberate untruth, concealment of a material fact, or deception.
An example would be if someone falsely claimed to be the original user of a trademark.
4. Noncompliance or Violation of a Regulation
It is possible to request rectification if the owner has violated a limitation listed on the register (such as limited use to a particular class or geographic area).
5. Erroneous Register Entry
The mark can be changed even if it was submitted correctly if it has become misleading or has lost its distinctiveness.
Example: Over time, a word mark turns into a generic phrase.
6. Possibility of Confusing with a Formerly Well-Known Mark
If a mark is likely to be mistaken for a well-known trademark and this was overlooked during registration, it may be challenged later through rectification.
7. Inaccurate Entry About Assignment or Ownership
If the proprietor’s name is incorrect or an erroneous assignment or transfer has been documented, a rectification can be filed.
8. Breaking international agreements
A correction can be requested under Section 11(8) and international commitments (such as the Paris Convention) if the mark infringes upon such treaty-based rights.
Artificial Intelligence And Intellectual Property Rights
To whom may a cancellation petition be submitted?
It is possible for any “person aggrieved” to apply for cancellation.
This contains:
competitors or companies that the registered trademark affects.
everyone who has a right to be concerned about the trademark’s non-registration.
Procedure for Cancellation and Rectification:
Application filing (TM-O):
Application submitted on TM-O form.
According to the relevant sections (e.g., Section 47 or 57).
It will be necessary to specify the grounds for cancellation.
Notification of Registered Proprietor Service:
They will serve a notification to the trademark owner.
The opportunity to submit a counterstatement is provided.
Evidence filing:
Both sides may submit affidavits and supporting documentation.
Hearing
Both parties will be given a chance to be heard at a hearing held by the Registrar.
Choosing:
The High Court or Registrar may decide to allow the registration to remain in effect, amend it, or cancel it.
Case Law:
Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. (2003)
Held that non-use of trademark without intent to abandon it is not a reason for cancellation under Section 47(b).
American Home Products Corp. v. Mac Laboratories Pvt. Ltd. (1986)
Formulated the doctrine of “person aggrieved” and “bona fide use.”
K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. (1970)
The court explicated situations under which cancellation on the basis of misleading similarity can be considered.
Conclusion:
In conclusion, the Trade Marks Act of 1999’s cancellation and correction procedures are crucial for maintaining the accuracy, equity, and integrity of the trademark registry. The purpose of these statutory remedies is to guarantee that only legitimate owners are able to take use of the exclusive rights granted by trademark registration and that the register is free of marks that are redundant, wrongly registered, or abandoned. While rectification allows for the repair of any error or omission in the register, whether on the part of the proprietor or the Registrar, cancellation can be requested on the basis of non-use, incorrect registration, or violation of statutory provisions.Both of these procedures serve the same public and private goals, protecting the rights of lawful trademark owners and protecting consumers from confusion or deceit. Furthermore, they promote healthy business rivalry by discouraging phoney or dishonest registrations. These remedies are subject to judicial monitoring because the High Courts have the authority to cancel and correct in addition to the Registrar. These statutory provisions are important tools for preserving the enforceability and integrity of trademarks as part of India’s intellectual property environment because the business world is always changing and the necessity for dynamic and trustworthy trademark registers grows more pressing.To guarantee that the register only includes legitimate, used, and legally registered trademarks, a trademark can be cancelled or rectified.
References
https://selvams.com/kb/in/trademarks/cancellation-rectification-trademark-india/
https://www.lexology.com/library/detail.aspx?g=1e34a836-5c38-484a-9079-62751b8bad2f
https://www.alonika.in/trademark/rectification/
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