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Rectification of Register of Trade Marks

A mark may have been wrongly registered or may be wrongly remaining on the register. In such cases the Act provides for rectification of the register. Any person, aggrieved by an entry wrongly made or wrongly remaining on the register of trademark, is entitled to file a petition for cancellation of registration or rectification of the register for removal of the registered mark. The grounds on which the registered trademark can be removed from the register have been narrowed down and restricted under the new Trade Marks Act, 1999 as compared to the grounds as were available under the old Act of 1958. For rectification of register an application should be filed before the trademarks registry, where the application for registration was filed, or before the Appellate Board.

Grounds for rectification:

  1. That the register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation.
  2. That the entry was made without sufficient cause i.e. registration was obtained by misrepresentation of, facts, similar to earlier mark registered etc.
  3. That the mark was wrongly remaining on register i.e. it is contrary to some provisions of the act or likely to cause confusion.
  4. That the mark has not been used for a continuous long period of more than five years.
  5. That the renewal fee has not been paid.

A trademark could be expunged from the register if registration is obtained by fraud. Where the registration has been obtained by suppression of material fact or false statement it is known as registration obtained by fraud.

The registered trade mark can be ordered to be removed from the register in view of section 47 of the Act if it is proved that the trade mark was registered without any bonafide intention on the part of the applicant for registration to use the trade mark in relation to the goods or services offered by him and, as a matter of fact, there has been no bonafide use of the trade mark up to a date three months before the date of application. Furthermore, if the registered trade mark is not used up to the date of three months before the date of application, a continuous period of five years from the date on which the trade mark was actually entered in the register or longer had elapsed during which there was no bonafide use thereof in relation to the goods and services, the period of five years is to be calculated from the date on which the mark was actually put on the register i.e. the date on which the registration was ordered to be made and not from the date of the application.

Precautions to prevent rectification or removal of mark from the register:

  1. Renewal of the mark from time to time.
  2. Not doing anything which will destroy the distinctive character or make it deceptive.
  3. Not allow the mark to remain unused for a period exceeding five years.
  4. Restrain others from infringing his mark by taking prompt action against them.

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