Alteration and correction of Register
Here, we are going to discuss about the rectification of trademarks. Rectification in the sense, correction and alteration in the Trademark register, where the registered trademarks are placed. Mistake is common in human era. So, the Trademarks Act 1999, provides the alteration and correction option in its laws. Section 58(1) providers for correction of errors and certain kinds of alteration of entries on application made by the registered proprietor. The Registrar may make consequential amendment or alteration in the certificate of Trademark registration. The procedure of making an application under the section is contained in Rules. The power conferred under section 58 is discretionary.
Registrar may, on application made in the prescribed manner by the registered proprietor,-
- correct any error in the name, address or description of the registered proprietor of a trade mark, or any other entry relating to the trademark;
- enter any change in the name, address or description of the person who is registered as proprietor of a trademark;
- cancel the entry of a trademark on the register;
- strike out any goods or classes of goods or services from those in respect of which a trademark is registered;
And may make any consequential amendment or alteration in the certificate of trademark registration, and for that purpose, may require the certificate of trademark registration to be produced to him. The Registrar may, on application made in the prescribed manner by a registered user of a trademark, and after notice to the registered proprietor, correct any error, or enter any change, in the name, address or description of the registered user.
Procedure Rules 97-100
The procedure is contained in the rules 97-100. Application should be made in one of the appropriate forms. The Registrar may require the applicant to furnish evidence in support of the application. The applicant should serve a copy of the application on the registered users and on any other person who appears from the register to have an interest in the trademark.
Change in names of partners-substitution of names of partners
When an application under section 58(1) is made for correcting the names of registered proprietors by substituting the names mentioned in the application for the names entered in the register notice of the application should be served on the person whose name is sought to be removed. It has been held that a proceeding for making an alteration of this nature in the register of trademarks cannot be regarded as a purely administrative proceeding and that the Registrar while discharging his duties in that behalf performs quasi-judicial functions whereby he decides, prima facie at least, the right of the parties. The party whose rights are going to be adversely affected by the decision of the Registrar should have a notice of those proceedings. Registrar’s decision should also be supported by reasons. When a partner’s name was got removed by filing a fraudulent dissolution of partnership, the register may be rectified by restoring the original name.
Correction of error
Only such errors which are of a clerical nature or which do not affect the rights conferred by registration can be corrected. If the mark is registered in the name of a wrong person, it cannot be corrected by entering the name of the true owner of the trademark. The proper procedure is to get the mark removed from the register and make a fresh application for trademark registration.
Change in name, address etc. Any change in the name of the proprietor without change in the proprietorship of the mark may be carried out under this section. When the ownership of the mark has changed hands the proper procedure is to make an application for entering the new owner as subsequent proprietor of the mark under section 45 and rule 68.
Cancellation of a trademark
The registration of a trademark may be cancelled on application by the proprietor. Such a procedure is usually adopted to avoid rectification proceedings when the proprietor is no longer interested in the mark. Cancellation of an existing registration may also be made when a fresh registration the proprietor is seeking would cover the existing one. In such cases the applicant for registration agrees to have his existing mark cancelled if and when the new mark is registered. The Registrar may in suitable cases accept an application for registration subject to the condition that the applicant would move for cancellation of the existing trademark registration before the new mark is registered.
Striking out goods
Striking out any goods amounts to partial removal of the mark. This procedure is resorted to ordinarily when there is a threat of rectification proceedings on the ground of non-use in respect of particular goods.
Correction or change in the registered user’s name etc.
Section 58(2) empowers the Registrar to correct any error or enter any change in the name, address and description of the registered user. This can be done only after giving notice to the registered proprietor. The procedure is governed by the rules prescribed. The Registrar may require evidence by way of affidavit or otherwise as to the circumstances in which the application is made.
ALTERATION OF REGISTERED TRADEMARK
1) The registered proprietor of a trademark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.
(3) Where leave is granted under this section, the trademark as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section (2).
Section 59 provides for alteration of registered trademark on application by the registered proprietor. The procedure is contained in the rules prescribed. The alteration should not affect the identity of the mark substantially. The Registrar has discretion either to refuse or to grant an application under the section. Granting the application may be subject to any limitations. The Registrar may advertise the application in the Journal if he thinks it expedient to do so. Where the application is advertised, any person may file a notice of opposition to the application and the procedure thereafter is analogous to that of an opposition to an application for trademark registration.
When the application for alteration is allowed without prior advertisement, the trademark as altered must be advertised in the Journal.
“Not substantially affecting the identity thereof”
What amounts to a substantial alteration of a registered trademark is difficult to define. Any addition or alteration which would affect the distinctiveness of the mark may not be allowed. Similarly an alteration which would make the mark to be known in the market by a name different from the one by which it is already known or is likely to be known may not be permissible. Identity of the mark should be judged from the visual as well as the phonetic aspect. Thus, addition or deletion of a word or words describing a pictorial representation appearing on the mark may amount to a substantial alteration of the registered trademark. No alteration of the mark which will make the altered entry offend against any provisions of the Act, for example, sections 9 and 11, will be permitted. If there is any objection to alteration of the registered mark, the proper procedure is to make a fresh application for the altered mark and in due course cancel the existing trademark registration if not required. Section 18 allowed a wider discretion in determining applications to amend pending marks, than section 59 for the alteration of registered marks.
Meaning of identity
By identity is meant the feature or features by which the mark will be recognized in its function of distinguishing the proprietor’s goods from the similar goods of other traders.
Alteration affecting third parties’ rights
In dealing with an application for alteration of a registered trademark the Registrar should consider whether the alteration is of such a nature that it would have affected the scope of investigation for conflict with other registered trademarks under section 11. He may also consider whether the altered mark would affect the rights of third parties using unregistered marks. But whether the retrospective alteration of the registered mark would debar aggrieved persons from pursuing an application under section 47(1) on the ground of non-user is not relevant for the purposes of an application for alteration of a registered mark.
Alteration necessitated by assignment
Where a mark containing the name of the proprietor is assigned an alteration of the mark by altering the name appearing thereon becomes necessary.
Instances of alteration
Addition of the word “Limited” has been allowed, but the addition of its abbreviation has been refused. The substitution of the initials of the name of the registered proprietor in place of the initials of their old name was allowed. Alteration of a trademark by striking out certain names and addresses and substituting the present firm name and trade address of the applicant was allowed. Leave to omit oval lines from the registered trademark was refused. Leave to substitute the registered proprietor’s name in Russian characters for the words “St. Petersburg” was disallowed.
Where the registered proprietors sought to alter the word “Slough” to “Compton” consequent upon shifting their works from Slough to Compton, the alteration was refused on the ground that “Compton” was a well-known surname and that its substitution for “Slough” in the trademark might not be understood as having merely a geographical significance.
Alteration of the mark by deletion of the words “Murston Works” therefrom and putting thereon the words “Burham” at the top and “Works” at the bottom was allowed.
- The addition of the word “Arrow “was held a substantial addition to the device of an arrow. “To the eye (though not it may be to the car) the addition of the word ‘Arrow’ is a substantial addition affecting the identity of the defendants’ mark.”
- Alteration of the registered trademark consisting of the word PELICAN in italic type to one with the letter “K” substituted for the letter “C”, both the mark remaining in lower case form, was allowed since the alteration did not substantially affect the identity of the mark. To those who knew German the altered mark, would indicate the German word corresponding to the English word ‘Pelican’, and to those not familiar with the German language the mark would appear as a mere misspelling of the word Pelican’.
- Application to alter a registered mark was refused on the ground that the allowed mark created a substantially different visual impression.
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