Chapter 7: The Trade Marks Act, 1999

CHAPTER VII: RECTIFICATION AND CORRECTION OF THE REGISTER

This chapter details the legal processes for changing or deleting entries in the official Register of Trade Marks. “Rectification” means to correct or cancel a mark.

Section 57: Power to cancel or vary registration and to rectify the register

This is the main “cancellation” section of the Act, which allows the trademark register to be “cleaned” of invalid or incorrect entries.

• Section 57(1):
  • What it says (Simple English): Any “person aggrieved” (someone who is negatively affected) can apply to the Registrar or the Appellate Board to cancel or vary (change) a trademark registration on the ground that the owner has violated a condition or failed to observe a limitation that was put on the registration.
  • What it means (Real-world Example): “Himalayan Spring” gets its trademark registered with a condition attached: “The mark shall only be used on water sourced from the Gangotri glacier.” A few years later, a competitor (a “person aggrieved”) discovers “Himalayan Spring” is just selling regular tap water. This competitor can apply for cancellation of the trademark because the owner failed to observe a condition of its registration.
• Section 57(2):
  • What it says (Simple English): Any “person aggrieved” can apply to the Registrar or Board to make, expunge (delete), or vary an entry in the register on any of the following grounds:
    • “Absence or omission”: An entry is missing (e.g., your recorded address change was never entered).
    • “Entry made without sufficient cause”: This is the most common and powerful ground. It means the trademark should never have been registered in the first place (e.g., it was descriptive, non-distinctive, or confusingly similar to an earlier mark).
    • “Entry wrongly remaining on the register”: The mark was valid, but isn’t anymore (e.g., it hasn’t been used for 5+ years, or the word itself has become generic, like “escalator”).
    • “Error or defect”: There is a clerical error or mistake in the entry.
  • What it means (Real-world Example): A company manages to register the trademark “FRESH VEGETABLES” for a supermarket. This mark is descriptive and should have been refused under Section 9. A rival supermarket, “BigBasket,” is a “person aggrieved” because this registration stops them from using the common words “fresh vegetables.” “BigBasket” can apply to the Board to expunge (delete) the registration because it was “made without sufficient cause.”
• Section 57(3):
  • What it says (Simple English): In any cancellation case, the tribunal (Registrar or Board) has the power to decide any other question that is necessary to resolve the main issue.
  • What it means (Real-world Example): While hearing a cancellation case, a dispute arises about whether a “Deed of Assignment” (sale document) was valid. The tribunal has the power to rule on the validity of that deed in order to decide who the rightful owner is and whether the mark should be cancelled.
• Section 57(4):
  • What it says (Simple English): The tribunal can start a cancellation or correction proceeding on its own motion (suo motu), without anyone applying for it. However, it must first give notice to the parties and give them a chance to be heard.
  • What it means (Real-world Example): During a hearing for a different case, the Registrar notices a trademark on the register that is clearly fraudulent or deceptive. The Registrar doesn’t have to wait for someone to complain. They can on their own initiate proceedings to cancel that mark, after sending a notice to the mark’s owner.
• Section 57(5):
  • What it says (Simple English): If the Appellate Board (the higher body) orders a rectification, it must send a notice of its order to the Registrar, who must then physically update the register accordingly.
  • What it means (Real-world Example): The Appellate Board orders the “FRESH VEGETABLES” mark to be cancelled. It sends a copy of this judgment to the Registrar of Trade Marks. The Registrar’s office then officially deletes that trademark from the public database.

Section 58: Correction of register

This section deals with non-controversial corrections, like fixing typos or updating owner details. This is not for changing the trademark itself.

• Section 58(1):
  • What it says (Simple English): The registered owner can apply to the Registrar to:
    • (a) Correct any error in their name, address, or description.
    • (b) Enter any change in their name, address, or description (e.g., the company has a new legal name or moved its office).
    • (c) Cancel the entry of their own trademark (i.e., voluntarily surrender it).
    • (d) Strike out (remove) certain goods or classes of goods from their registration.
  • What it means (Real-world Example):
    • For (b): “Tata Motors Limited” officially changes its name to “Tata Motors Corp.” It must file an application to the Registrar to update the register with its new legal name.
    • For (d): “Sony” has a single registration for “SONY” covering “Televisions, Laptops, and Bicycles.” They stop making bicycles. They can apply to the Registrar to strike out “Bicycles” from their registration, narrowing its scope to just “Televisions and Laptops.”
• Section 58(2):
  • What it says (Simple English): A Registered User (licensee) can also apply to correct an error or change in their own name, address, or description.
  • What it means (Real-world Example): Hardcastle Restaurants (the “Registered User” for McDonald’s in India) moves its headquarters from Mumbai to Delhi. It can file an application to update its address in the trademark register.

Section 59: Alteration of registered trade marks

This section explains how you can (or cannot) change the trademark logo or word itself after it has been registered.

• Section 59(1):
  • What it says (Simple English): The owner can apply to add to or alter their registered trademark, but only in a way that does not substantially affect its identity. The Registrar can refuse or grant the alteration on any conditions they see fit.
  • What it means (Real-world Example):
    • Allowed: Your registered logo is the word “APPLE” in a specific font. You apply to alter it by changing the font to a more modern, simple one. This likely does not substantially affect its identity, so it would be allowed.
    • Refused: Your registered mark is the word “APPLE.” You apply to alter it to “APPLE COMPUTERS.” This does substantially affect its identity (it adds a new word). This would be refused. You would have to file a new application for “APPLE COMPUTERS.”
• Section 59(2):
  • What it says (Simple English): The Registrar may decide to advertise the proposed alteration (e.g., in the Trade Marks Journal) if it seems necessary. If it is advertised, any person can then oppose the alteration, just like they can oppose a new application.
  • What it means (Real-world Example): You apply to alter your logo by changing its main color from blue to red. The Registrar notices this new red logo looks very similar to a competitor’s existing logo. The Registrar will advertise your proposed change, giving the competitor a chance to oppose it, arguing that the alteration makes it confusingly similar to their mark.
• Section 59(3):
  • What it says (Simple English): If the alteration is granted, the new, altered trademark must be advertised (unless it was already advertised under sub-section (2)). This ensures the public register is updated with the new version of the mark.
  • What it means (Real-world Example): Your minor font change is granted without opposition. The Registrar must now publish the new logo in the journal, so everyone knows this is the new official version of your registered mark.

Section 60: Adaptation of entries in register to amended or substituted classification of goods or services

This is a technical, administrative section for when the entire international classification system (the “classes” 1-45) is updated.

• Section 60(1):
  • What it says (Simple English): The Registrar can amend the register to bring it in line with a new or updated classification system. However, when doing so, they cannot make any change that would add any new goods/services to your registration or change your original registration date.
  • What it means (Real-world Example): Your mark is registered for “computer software” in Class 9. The international body (WIPO) updates the classification, and “downloadable software” is moved from Class 9 to a new Class 46. The Registrar will move your registration to Class 46. This does not change your original 2010 priority date, and the Registrar cannot use this as an excuse to also add “cloud services” (also in Class 46) to your registration.
• Proviso to Section 60(1):
  • What it says (Simple English): Provides a rare exception if following the above rule is too complex and the change is minor and doesn’t prejudice anyone’s rights.
• Section 60(2):
  • What it says (Simple English): Any proposal to re-classify a mark under this section must be advertised and notified to the owner. Any “person aggrieved” can oppose the re-classification if they believe it violates the rules in sub-section (1) (e.g., if they think the Registrar is sneakily adding new goods).
  • What it means (Real-world Example): The Registrar advertises the proposal to move your “software” mark from Class 9 to Class 46. A competitor cannot oppose this just because they don’t like it. They could only oppose it if they could prove the Registrar was also trying to add “computer hardware” to your registration during the move.