Rectification Procedure Trademarks.
I. Rectification of Trademark – Concept
Rectification is a judicial or administrative procedure to correct errors or remove registrations in the Trademark Register. It is aimed at maintaining the integrity of the trademark register and preventing unjust monopolization.
Legal Basis in India:
Section 57 of the Trade Marks Act, 1999:
“Any person who believes that a registered trademark ought not to be registered may apply to the Registrar for rectification of the register on the grounds specified in the Act.”
Key Grounds for Rectification:
Non-compliance with registration requirements – e.g., mark is not distinctive, generic, or descriptive.
Fraudulent registration – mark registered fraudulently or without bona fide intention.
Infringement / Conflicting marks – registration conflicts with earlier marks or creates likelihood of confusion.
Abandonment / Non-use – mark not used for 5 years without proper reason.
Invalid assignment / unauthorized ownership – registered in wrong name.
Procedure:
Application filed before the Registrar of Trademarks
Registrar examines the application
If justified, rectification order is passed, modifying or removing the registration
Appeal can be made to the Intellectual Property Appellate Board (IPAB), now under High Courts after IPAB dissolution.
II. Rectification Procedure – Step by Step
Filing of application – Any aggrieved person can apply
Grounds must be specified – Including Section 57(1) or other applicable sections
Notice to registered proprietor – Registrar serves notice to mark holder
Hearing / Written submissions – Both parties may present evidence
Registrar’s Order –
Total removal (cancellation) of trademark
Partial rectification (e.g., restricting class of goods/services)
Appeal – High Court (if IPAB dissolved)
Time Limit:
No strict limitation; depends on discovery of grounds for rectification
III. Case Laws on Trademark Rectification
1. Cadbury UK Ltd. v. Neeraj Food Products (2007) – Delhi High Court
Facts:
Cadbury’s “Dairy Milk” mark
Defendant registered a similar mark
Cadbury applied for rectification of conflicting registration
Held:
Registrar’s order rectified the register, cancelling the defendant’s registration
Court emphasized likelihood of confusion and prior reputation
Importance:
Rectification ensures protection of prior marks and prevents misuse of the register
2. Asian Paints (India) Ltd. v. Asiatic Paints Ltd. (2000) – Delhi High Court
Facts:
Plaintiff: “Asian Paints”
Defendant registered similar mark “Asiatic Paints”
Plaintiff sought rectification
Held:
Court held that defendant’s registration was deceptively similar
Registrar’s decision to rectify and cancel registration confirmed
Importance:
Rectification can be used to remove deceptively similar marks to prevent infringement
3. Maharaja Shree Umaid Mills Ltd. v. Bimal Kumar (1991) – Rajasthan High Court
Facts:
Trademark “Umaid” registered
Conflicting mark “Umaid Tex” registered by another party
Rectification sought
Held:
Court held defendant’s registration should be removed
Emphasized public interest and preventing consumer confusion
Importance:
Shows rectification protects distinctive and established trademarks
4. Tata Sons Ltd. v. Manu Kosuri (2010) – Delhi High Court
Facts:
Plaintiff: Tata’s “Tata Sky”
Defendant registered “Tata Sky Broadband”
Rectification sought for confusingly similar registration
Held:
Court allowed rectification of the conflicting registration
Highlighted well-known marks deserve extra protection
Importance:
Section 57 used to remove registrations conflicting with famous or well-known marks
5. Colgate-Palmolive v. Anchor Health & Beauty Care Pvt. Ltd. (2005) – Delhi High Court
Facts:
Colgate’s toothpaste brand
Defendant registered Colgate-sounding mark
Rectification sought
Held:
Registrar directed cancellation of infringing mark
Court affirmed rectification due to likelihood of deception
Importance:
Rectification acts as a preventive tool to maintain brand integrity
6. Godrej & Boyce Mfg. Co. Ltd. v. Action Machinery Pvt. Ltd. (2012) – Delhi High Court
Facts:
Plaintiff: “Godrej” – well-known brand
Defendant registered similar mark for lockers
Plaintiff applied for rectification
Held:
Court upheld rectification, cancelling defendant’s registration
Emphasis on protecting reputation of well-known trademarks
Importance:
Rectification is especially powerful for well-known marks under Section 57(1)(b)
7. Amritdhara Pharmacy v. Satya Deo Gupta (1963) – Supreme Court
Facts:
Trademark “Amritdhara” – Ayurvedic brand
Defendant registered similar name for different goods
Rectification invoked
Held:
Supreme Court allowed rectification, preventing misrepresentation to public
Reinforced principle of likelihood of deception and unfair advantage
Importance:
Historical precedent emphasizing rectification protects consumers and brand owners
IV. Key Principles from Case Law
Rectification ensures the integrity of the trademark register
Registration in bad faith or fraud can be rectified
Conflicting or deceptively similar marks can be removed
Well-known marks enjoy extended protection under rectification
Public interest and prevention of confusion are central
Rectification can be full cancellation or partial restriction of registration
V. Practical Steps in Rectification Proceedings
Identify conflicting or invalid registrations
File application under Section 57 with Registrar
Provide proof of prior rights, reputation, and confusion
Serve notice to registered proprietor
Attend hearings and submit evidence
Appeal Registrar’s order in High Court (IPAB now dissolved)
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