Correction of Register in respect of errors in Trademark Registration
Sub-clause (1) empowers the Registrar to correction of the Register in respect of the errors relating to the particulars of the registered trademark and also to make consequential amendments, and alterations in the certificate of trademark registration. Sub-clause (2) empowers the Registrar to rectify the register to rectify any mistake or change of name, etc., on an application by the registered user after giving notice to the registered proprietor.
Comments- Section 58 provides for “correction of the register”, on an application made by the registered proprietor. The nature of corrections envisaged are-
- Any mistake in the name, address or trade description of the registered proprietor of a trademark, or any other entry relating to the trademark;
- Any alteration in the name, address or description of the person who is registered as proprietor;
- Cancellation of the entry of a trademark;
- Striking out of any goods or classes of goods or services in respect of which the mark is registered.
Rule 75, 80, 83 and 85 govern the procedure in this behalf. The following are the relevant forms prescribed:
- Form TM-P for request for correction of error or amendment
- Form TM-P for request to enter any alteration of name or trade description of registered proprietor or registered user of trademark upon the register
- Form TM-P request for alteration of the address of principal place of business or of residence in India or of the address in the home country aboard in the register
- Form TM-P for application by registered proprietor for cancellation of entry thereof in the register.
- Form TM-P for application by registered proprietor to strike out goods or services of registered mark.
- Form TM-P request by registered proprietor or registered user who has no principal place of business in India to enter, alter or substitute an address for service in India as part of his registration.
Where an application is made under section 58, the Registrar may require the applicant to furnish such evidence by affidavit or otherwise as he may think fit as to the circumstances in which the application is made. Copy of the application is required to be served on the registered user(s), if any, and to any other person who appears from the register to have an interest in the trademark. After allowing the request, the Registrar may make any consequential amendment or alteration in the certificate of registration and accordingly, he may require the certificate of registration to be produced to him for the purpose. Where an application is made by a registered user, the Registrar will correct any error, or enter any change in the name, address or description of the registered user, after notice to the registered proprietor. An order of the Registrar under this section is obviously discretionary and the exercise of the power is subject to the provision of section 128, which mandates that no discretionary power shall be adversely exercised without giving to the person as opportunity of being heard.
Correct any error on the name
Clause (a) provides for an application to be made by the registered proprietor to “correct any error in the name, address or description of the registered proprietor of a trademark or any other entry relating to the trademark”. What is contemplated under this clause is only correction of any clerical error, be it in the name, address or description of the registered proprietor or any other entry in the register relating to the trademark. The correction cannot obviously result in affecting the rights conferred by the trademark registration. The inclusion of a name of any new partner or substitution of the name of the proprietor by a different person on any ground is not covered by this provision.
Enter any change in the name
The change of name etc. which is envisaged under clause (b) does not cover a case of change in ownership of the trademark, but merely a change in the name, such as where a private limited company becoming a limited company, as per company’s law. As was held in New Ormonde Cycle Co’s Trademark, that where a limited company, being the registered owner of a trademark, changed its name, it was the duty of the comptroller, on request to substitute the new name for the old name on the register. Such change may also include a change in address or description of the person who is the registered proprietor of the trademark. The nature of change is thus purely administrative and the Registrar is not required to perform any function of a quasi-judicial character in this respect. Change of name is clearly to be distinguished from one of the change in proprietorship of the trademark. In the latter case, the Registrar is called upon to perform quasi-judicial functions, involving as it does determination of the rights of parties. The procedure in this respect is governed by section 45, read with rules 75 to 85. Though there is no explicit provision in the rules, it is the practice of the Registry to issue a notice to the person whose rights are likely to be adversely affected by the Registrar on the basis of a request on Form TM-P for bringing any change in the name or names of partners, entailing change in ownership of mark.
Cancel the entry of a trademark
Clause (c) provides for the registered proprietor to make an application to cancel the entry of a trademark on the register. An application in this respect may be made on Form TM-P. If there is any registered user, a copy of the application is to be saved on the registered user and the fact confirmed in the application. The procedure may be adopted in cases where the registered proprietor apprehends successful rectification proceedings in respect of the registered mark or so as to facilitate registration of a new mark in the name of a different proprietor, by removing the conflict based on the existing trademark registration. Some of the registered proprietors also sought cancellation of their registered trademarks when the Central Government proposed levy of exercise duties in respect of certain goods sold under registered trademarks.
Dismiss out any goods or services or classes of goods or services
A request on Form TM-P may be made by the registered proprietor of a trademark to dismiss out any kind of goods which is mentioned from these for which the mark is registered. Where a trademark is registered for a wide specification of goods or services from those for which the mark is registered. Where a trademark is registered for a wide specification of goods or services and the mark is being used only in respect some of such goods or services, the registered proprietor may take proceedings under clause (d) to dismiss out other kind of goods or services which are associated or classes of goods or services covered by the trademark registration, especially in a case where the mark is threatened to be removed on the ground of non-use under section 47 of the Trademarks Act, 1999.
Correction of any error concerning registered user
Sub-section(2) of section 58 provides for correction of any error or entry of any change in the name, address or description of the registered user, on an application made by a registered user. It is necessary to give notice to the registered proprietor when such application is made by the registered user. Rule 96 provides that the Registrar may require such evidence by the affidavit or otherwise as he may think fit as to the circumstances in which the application is made. An application under sub-section (2) may be made in Form TM-P as may be appropriate. Hope you all are getting clear idea about the Correction of Register in respect of errors in Trademark Registration and this will help you at the time of your trademark filing.
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