“It is of no use to discover our own faults and infirmities unless the discovery prompts up to amendment.”
–John Quincy Adams.
The essence of trademark law in today’s business world cannot be overemphasized. Trade Mark law protects words, slogans, and symbols that serve to identify different brands of goods and services in the market place. For a trademark to have the protection of the law, it must be registered in accordance with the law. However, situations may arise when an applicant of a trademark may want to amend a registered trademark for reasons best known to him.
Amendment and its extent
The trademark law in India provides the Applicant of a trademark with an opportunity to correct an application. However, there is a basic principle which has to be followed – Only minor corrections must be done which does not affect the identity of the trademark or the goods or services, substantially. If the amendment is such, which materially alters the filed mark there can rise a necessity of a fresh application.
Legal Provisions
The Registrar may permit an amendment to an application, before or after the application has been accepted for registration, under section 22 of the Trade Marks Act, 1999. While the provision for alteration of registered trademarks is under Section 59. The procedure for amending an application is stated by Rule 37 of Trade Mark Rules, 2017. As per the rule, an application can be amended by filing a prescribed form, TM-M along with the prescribed fee.
Permitted Alterations or Amendments
The Registry decides whether to allow an amendment in an application on a case to case basis as he may think fit. The Registry normally accepts clerical mistakes and allows amendments in the trademark application. However, it does not allow replacing the name of the applicant with some other person.[1] For address, it can be corrected when there is a minor mistake or can also be altered in totality. For class, it may be permissible based on the facts and circumstances. If an amendment is made after advertisement of a mark it shall lead to re-advertisement which will delay the registration of the trademark, eventually.
In case an applicant wants to correct a mistake in user statement the onus is on him to justify by way of evidence. The correct date of user becomes significant as it affects the rights of parties by reason of priority in adoption of the mark.[2] Amendment in the specification of goods and/or services may also be permissible. The examiner may instruct an amendment or correction to the application, sometimes, after the examination of an application. For example, if the classification of the goods/services is not correct, the examiner will instruct you to file an appropriate form to correct the classification.[3]
Legal Status
Previously, in 2012, the CGPDTM had severely restricted amendments to trade marks. However, in 2014, the Delhi High Court declared those restrictions illegal. It was adjudged that the registrar has quasi-judicial powers and that it can permit an alteration if he is satisfied the amendment claimed is bona fide.
By
Deepika Pandey
2nd Year LLB Student
Bharati Vidyapeeth New Law College
[1] Setindiabiz, Amendments in Trade mark Application, July 19, 2017, https://www.setindiabiz.com/learning/amendments-in-trade mark-application/
[2] Ibid
[3] Intepat, Amendment/Correction of trade mark application in India, July 24, 2016, https://www.intepat.com/blog/trade mark/trade mark-rules-amendment-india/