Not every trademark on the register deserves to stay there. Some marks were registered despite lacking distinctiveness. Others haven't been used for years and simply occupy space that rightful owners could claim. Trademark rectification is the legal mechanism that allows any aggrieved person to challenge such entries and seek their correction or removal from the Trademark Register.
Whether you're a business owner whose brand is blocked by a dormant registration or someone whose own mark was wrongfully altered, understanding the trademark rectification application process in India is essential. Governed by Sections 47 and 57 of the Trade Marks Act, 1999, this procedure ensures that the register remains clean, accurate, and fair. This guide explains the legal grounds, the step-by-step procedure, the forms and fees involved, and practical advice for navigating rectification proceedings successfully.
What is Trademark Rectification?
Trademark rectification refers to the process of correcting, modifying, or removing an entry from the Trademark Register maintained by the Registrar of Trademarks in India. The Register is a public record of all trademarks that have been granted registration, and its accuracy is vital for the integrity of the entire trademark system.
Rectification can take several forms. It may involve the complete removal of a trademark from the register, a partial cancellation limiting the goods or services covered, or a correction of factual details such as the proprietor's name, address, or the description of goods. The process can be initiated by any person aggrieved by the existing entry, or in certain circumstances, by the Registrar acting on their own motion.
Think of the Trademark Register as a ledger of exclusive brand rights. If an entry in that ledger is incorrect, outdated, or unjustified, it potentially harms other businesses and consumers. Rectification keeps the ledger accurate. For businesses planning to file new applications, a preliminary search sometimes reveals existing marks that block registration. Understanding rectification gives you a pathway to clear such obstacles through the formal trademark registration process.
Legal Grounds for Trademark Rectification
The Trade Marks Act provides specific grounds under which a trademark rectification application can be filed. These grounds fall primarily under two sections.
Section 47: Removal on Grounds of Non-Use
Section 47 is the most frequently invoked ground for rectification. It targets trademarks that have been registered but are not being used in commerce. The rationale is simple. A trademark exists to distinguish goods or services in the marketplace. If the proprietor isn't using it, the registration serves no commercial purpose and merely blocks others from adopting similar marks.
Under Section 47(1)(a), any person aggrieved can apply for removal if a registered trademark has not been used by the proprietor or a permitted user for a continuous period of five years and three months from the date of registration. The three-month buffer accounts for the time taken to complete the registration process itself.
Under Section 47(1)(b), removal can be sought if there was no bona fide intention to use the trademark at the time of filing and no subsequent bona fide use has occurred up to the date three months before the rectification application. This sub-section targets applicants who registered marks purely to block competitors, a practice commonly referred to as trademark squatting.
The burden of proving use lies with the registered proprietor. If the proprietor cannot demonstrate genuine commercial use through invoices, packaging, advertisements, or other trade evidence, the mark is vulnerable to removal.
Section 57: Rectification for Wrongful Entry
Section 57 provides broader grounds for rectification. It allows any aggrieved person or the Registrar to apply for correction or removal of an entry that was made in the register without sufficient cause, was wrongly remaining on the register, or contains an error or defect.
This section covers situations where the mark should never have been registered in the first place. For instance, if a trademark was registered despite being descriptive, generic, or deceptively similar to a well-known mark, Section 57 provides the route to challenge that registration. It also covers clerical errors in the register, such as incorrect classification, misspelt proprietor names, or wrong addresses.
Unlike Section 47, which focuses narrowly on non-use, Section 57 is a broader corrective tool. It ensures that the register reflects the true legal position and that no entry persists that could mislead the public or prejudice the rights of other trademark owners.
Grounds at a Glance: Section 47 vs Section 57
| Parameter | Section 47 (Non-Use) | Section 57 (Wrongful Entry) |
| Primary Ground | Trademark not used for 5 years and 3 months | Entry made without sufficient cause or contains errors |
| Who Can File | Any person aggrieved | Any person aggrieved or the Registrar |
| Burden of Proof | On the registered proprietor to prove use | On the applicant to prove wrongful entry |
| Relief Sought | Removal of the mark from the register | Removal, correction, or variation of entry |
| Common Use Case | Dormant marks blocking new applications | Marks registered despite descriptiveness, similarity, or fraud |
| Forum | Registrar or High Court | Registrar or High Court |
Trademark Rectification Application: Step-by-Step Procedure
Step 1: Determine Locus Standi
Before filing, establish that you qualify as an "aggrieved person." You don't need to be a direct competitor. Any person whose commercial interests are affected by the existing registration can file a trademark rectification application. For example, if a dormant mark in the same class prevents you from registering your own brand, you have sufficient standing.
Step 2: Identify the Correct Ground and Forum
Decide whether your application falls under Section 47 (non-use) or Section 57 (wrongful entry). The ground determines the arguments and evidence you'll need. Rectification applications can be filed before the Registrar of Trademarks or directly before the High Court. If a counter-suit is already pending in a court, the rectification application must be filed in that court.
Step 3: Prepare and File the Application
File Form TM-O along with the prescribed government fee. The fee for an online filing is Rs 9,000 per class for entities other than individuals and startups, and Rs 4,500 for individuals, startups, and small enterprises. The application must include the details of the registered mark, the registration number, the grounds for rectification, and supporting evidence.
Draft a detailed statement of case explaining why the mark should be removed, corrected, or varied. Attach all supporting documents, including evidence of non-use by the proprietor (for Section 47 applications) or proof of wrongful registration (for Section 57 applications). An affidavit verifying the facts stated in the application is also required.
Step 4: Service and Counter-Statement
Once the application is filed, the Registrar serves a copy on the registered proprietor. The proprietor has two months to file a counter-statement defending their mark. If no counter-statement is filed within the deadline, the Registrar may proceed with the rectification without hearing the other side.
If the proprietor files a counter-statement, both parties are given the opportunity to submit evidence. The Registrar then schedules a trademark hearing where both sides present oral arguments before a final decision is rendered.
Step 5: Hearing and Decision
At the hearing, the applicant presents their case first, followed by the proprietor's defence. The Registrar evaluates the evidence, considers the legal arguments, and issues an order. If the rectification is granted, the entry is corrected, varied, or removed from the register. If dismissed, the existing registration remains intact, and the applicant may consider appealing to the High Court.
Who Can File a Rectification Application?
The Act uses the term "person aggrieved," which Indian courts have interpreted broadly. You don't need to own a competing trademark. Any person whose trade, business, or legal interests are genuinely affected by the existing registration qualifies. This includes businesses whose trademark applications were refused due to the cited mark, competitors in the same industry, and even consumers or public interest groups in exceptional cases.
The Registrar of Trademarks can also initiate rectification on their own motion under Section 57. This typically happens when administrative errors are discovered or when the Registrar identifies entries that clearly violate the provisions of the Act. However, suo motu action by the Registrar is relatively uncommon, and most rectification proceedings are initiated by private parties.
Defending Against a Rectification Application
If someone files a rectification application against your registered trademark, you have the right to defend your mark. The most critical step is filing the counter-statement within the two-month deadline. Failing to respond effectively concedes the case.
For Section 47 challenges based on non-use, gather comprehensive evidence demonstrating that the mark has been used in trade within the relevant period. Sales invoices, purchase orders, export documents, advertising receipts, product photographs, and website analytics all serve as proof of genuine commercial use. Even minimal but bona fide use can defeat a non-use challenge, provided the evidence is authentic and verifiable.
For Section 57 challenges, your defence should focus on establishing that the registration was lawfully obtained and that the entry is correctly recorded. If the challenge is based on similarity with a prior mark, demonstrate the differences and argue that no genuine likelihood of confusion exists. Businesses that proactively manage their intellectual property through timely trademark renewal and consistent commercial use are far better positioned to withstand rectification challenges.
Practical Tips for a Successful Rectification
Start with a thorough investigation. Before filing, gather as much information as possible about the target mark. Check the IP India portal for its filing date, registration date, renewal history, and the goods or services covered. Search online marketplaces, e-commerce platforms, and business directories for any evidence of the mark's use, or lack thereof.
Engage a qualified trademark professional to draft your application. Rectification proceedings involve complex legal arguments, and the quality of your written submissions directly impacts the outcome. A poorly drafted application wastes both time and filing fees. For businesses also managing trademark opposition proceedings or new trademark registration filings, coordinating these efforts under a unified strategy ensures consistency and avoids contradictions across proceedings.
Conclusion
Trademark rectification is a vital mechanism for maintaining the accuracy and fairness of the Trademark Register in India. Whether you're seeking to clear a dormant mark that blocks your registration or defending your own mark against a challenge, understanding the grounds under Sections 47 and 57, the procedural steps, and the evidence requirements is essential for a favourable outcome.
The process rewards preparation. Thorough investigation, well-drafted applications, and strong documentary evidence are the pillars of a successful rectification proceeding. If you need professional support for filing or defending a trademark rectification application, Patron Accounting's team of experienced trademark professionals offers end-to-end guidance to protect your brand rights effectively.
