Every entrepreneur or a brand owner aims to attain brand recognition in the market and accordingly invests his time, money and energy to attain the same. During their journey, they often overlook the benefits of brand protection and fail to obtain a trademark registration. This mistake, in turn, becomes an opportunity for their competitors who diligently obtain trademark registration of the said brand name and then bar you from using your brand name. This is when you realise that ignoring brand registration was a blunder that has cost you a fortune and further, becomes more painful when you see your competitor enjoying the fruits of your hard work. It has been seen that more than 25% of entrepreneurs or brand owners accept their fate and they either give up on their idea or they make a fresh start all together because they are not aware with the laws and their rights under the law.
The Trademark laws provide such entrepreneurs/brand owners with a second chance to rectify their mistake and to undo the wrong done to them. As per the provisions of section 47 of the trademark act 1999, any person who is aggrieved by the registration of a trademark of some other person can apply for “Rectification / Cancellation of a Trademark”. This legal remedy is granted to any person whose brand name has been usurped by any other person who is not the rightful owner of the mark in question.
1. Grounds for Filing application for Rectification/ Cancellation of Registered Trademark
a. That the registration was made without sufficient cause or registration was obtained by misrepresentation of facts, similar to an earlier mark registered.
b. That the mark was wrongly remaining on the register in case it is against to some legal provisions of the Act or likely to cause confusion.
c. Making any changes, amendments, or modification in connection with any registered trademark as per the recent advancement.
d. Non-use of any registered trademark for more than five years by the registered proprietor.
e. Non-renewal of the original or previous registration of the trademark.
f. A trademark could be expunged from the register in case registration is obtained by fraud. Particularly, where the registration has been obtained by suppression of material fact or false statement it is known as registration obtained by fraud.
g. Inclusion or addition of certain more class or goods or services, in case it is against the business extent of the registered trademark.
h. Non-conformity with one or more grounds stipulated in Section 9 and Section 11 of the Indian Trade Marks Act of 1999.
2. Who can apply for Rectification of Registered Mark?
Any person who is aggrieved as per the ground mentioned above can apply for rectification/cancellation of the trademark.
3. Where to apply for Rectification of Registered Mark?
An application for rectification of a registered trademark can be filed before the Trademark Registry under whose jurisdiction the original application for registration of a trademark was filed i.e. Mumbai, Chennai, Kolkata, Delhi, Ahmadabad.
4. The procedure of applying for Rectification of a Registered Trademark.
Any person who is aggrieved by the registration of a trademark shall apply for rectification/cancellation vide application TM-O along with the fee prescribed in the Trademark Rules.
In a similar scenario, the Hon’ble Delhi High Court recognized the legal principle of Prior user of a mark i.e. in the case of M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited the Court reiterated the law that a prior user of a trademark will override the subsequent user even if the subsequent user has registered the trademark.
In conclusion, we would like to say that every person should keep in mind that “Law is for the Diligent and not Indolent”, therefore, one has to be proactive towards their brand protection and should obtain brand registration at the earliest, else there can be consequences which may be beyond control. However, its never too late for anything and despite all odds brand owners can still try to gain control over situations discussed above.