CHAPTER VI – RECTIFICATION AND CORRECTION OF REGISTER
Alteration or rectification of register
94.)Application
to rectify or remove a trade mark form
the register.
An application to the Registrar under section
46, 47 (4) or 56 for the making, expunging or varying of any entry relating to a trade
mark in the register shall be made in duplicate on form
TM –26 and shall be accompanied by a statement in duplicate setting out fully the
nature of the applicant’s interest, the facts upon which he bases his case and the
relief which he seeks. Where the application is made by a person who is not the registered
proprietor of the trade mark in question, the application and the statement aforesaid
shall be left at the Trade Marks Registry in triplicate. In case there are registered
users, such application and statements shall be accompanied by as many copies thereof as
there are registered users. A copy each of the application and statement shall be
transmitted forthwith by the Registrar to the registered proprietor and to each of the
registered users and to any other person who appears from the register to have an interest
in the trade mark.
95.)Further procedure.
Within two months from the receipt by a registered proprietor of the copy of the
application mention in rule 94 he shall send to the Registrar on form TM – 6 a counter-statement in triplicate
of the grounds on which the application is contested and if he does so the Registrar shall
serve a copy of the counter-statement on the person making the application. The provisions
of rules 53 to 60 shall thereafter apply mutatis mutandis to the further proceedings on
the application. The Registrar shall not, however, rectify the register or remove the mark
from the register merely because the registered proprietor has not filed a
counter-statement. In any case of doubt any party may apply to the Registrar for
directions.
96.)Intervention
by third parties.
Any person, other than the registered proprietor, alleging interest in a registered trade
mark in respect of which an application is made under rule 94 may apply on form TM – 27 for leave to intervene, stating
the nature of his interest, and the Registrar may refuse or grant such leave after hearing
(if so required) the parties concerned, upon such conditions and terms including
undertakings or conditions as to security for cost as he may deem fit to impose.
97.)Rectification
of the register by the Registrar of his own motion.
1.) The notice, which the Registrar is required to give under sub-section (4) of section 56, shall be sent in writing to the
registered proprietor, to each registered user, if any, and to any other person who
appears from the register to have any interest in the trade mark, and shall state the
grounds on which the Registrar proposes to rectify the register and shall also specify the
time, not being less than one month from the date of such notice. Within which an
application for a hearing shall be made.
2.) Unless within the time specified in the notice aforesaid, any person
so notified sends to the Registrar a statement in writing setting out fully the facts upon
which he relies to meet the grounds stated in the notice or applies for a hearing, be may
be treated as not desiring to take part in the proceedings and the Registrar may act
accordingly.
3.) If the Registrar decides to rectify the register he shall
communicate his decision in writing to the registered proprietor and to each registered
user, if any.
Alteration of Address
98.)Alteration
of address in register.
1.) A registered proprietor or a registered user of a trade mark, the
address of whose principal place of business in India or whose address in his home
country, as the case may be, is changed so that the entry in the register is rendered
incorrect, shall forthwith request the Registrar on form
TM – 34 to make the appropriate alteration of the address in the register, ant the
Register shall alter the register accordingly if he is satisfied in the matter.
2.) A registered proprietor or a registered user of a trade mark, whose
address for service in India entered in the register is changed, whether by discontinuance
of the entered address or otherwise, so that the entry in the register is rendered
incorrect, shall forthwith request the Registrar on form
TM – 50 to make the appropriate alteration of the address in the register, and the
Registrar shall alter the register accordingly if he is satisfied in the matter.
3.) A registered proprietor or a registered user of a trade mark the
address of whose principal place of business in India or whose address in his home country
or whose address for service in India is altered by a public authority, so that the
changed address designates the same premises as entered in the register, may make the
aforesaid request to the Registrar on form TM
– 34 or TM – 50, as the case may be, and if he does so he shall leave therewith
a certificate of the alteration given by the said authority. If the Registrar is satisfied
as to the facts of the case, he shall alter the register accordingly but shall not require
any fees to be paid on the forms, notwithstanding
the provisions of sub-rule (2) or rule 11 or sub-rule (2) of rule 12.
4.) (i) Where a registered proprietor makes a
request under sub-rule (1), (2)
or (3), he shall serve a copy of the request on the registered user or users, if any, any
inform the Registrar accordingly.
(iii) Where the request aforesaid is made by a registered user, he shall
serve a copy thereof on the registered proprietor and other registered users, if any, and
inform the Registrar that he had done so.
5.) In case of the alteration of the address of a person entered in the
register as the address for service in India of more than one registered proprietor or
registered user of trade marks, the Registrar may, on proof that the said address is the
address of the applicant and if satisfied that it is just to do so, accept an application
from that person on form TM – 50, amended so
as to suit the case, for the appropriate alteration of the entries of his address as the
address for service in the several registrations, particulars of which shall be given in
the form and may alter the entries accordingly.
6.) All applications under this rule on form TM – 50 shall be signed by the registered
proprietor or the registered user, as the case may, or by an agent expressly authorised by him for the purpose
of such an application, unless in exceptional circumstances the Registrar otherwise
allows.
Correction of Register
99.)Application
under section 57 (1).
Where an application has been made under sub-section
(1) of section 57 for the alteration of the
register by correction, change, cancellation or striking out goods or for the entry of a
disclaimer or memorandum, the Registrar may require the applicant to furnish such evidence
by affidavit or otherwise as the Registrar may think fit, as to the circumstances in which
the application is made. Such application shall be made on form TM –16, TM – 33, TM – 34, TM
– 35, TM – 36, TM – 37 or TM – 50 as may be appropriate and a copy
thereof shall be served by the applicant on the registered user or users, if any, under
the registration of the trade mark in question and any other person who appears from the
register to have an interest in the trade mark.
100.)Advertisement
of certain applications.
1.) Where application is made under clause (e) of sub-section (1) of section 57 on form TM – 37 to enter a disclaimer or
memorandum relating to a trade mark, the Registrar before deciding upon such application
shall advertise the application in the journal
in order to enable any persons to file at the Trade Marks Registry a statement in writing,
showing the reasons for his objections to the proposed entry, within three months from the
date of the advertisement or within such further time not exceeding one month as the
Registrar may allow.
2.) The Registrar shall, after considering the application and the
statement aforesaid and hearing the parties, if so required, decide to allow or refuse the
application and shall communicate his decision in writing to the applicant as well as any
other party to the proceedings.
Alteration of Registered Trade-Mark
101.)Alteration
of registered trade mark.
Where a person applies under section 58 for leave to add to or alter his
registered trade mark, he shall make his application in writing on form TM – 38 and shall furnish twelve copies of
the mark as it will appear when so added to or altered. A copy of the application and of
the mark so amended or altered shall be served by the applicant on every registered user,
if any.
102.)Advertisement
before decision and opposition, etc.
1.) The Registrar shall consider the application and shall, if it
appears to him expedient, advertise the application in the journal before deciding it.
2.) Within three months from the date of advertisement under sub-rule
(1), or within such further period, not exceeding one month in the aggregate, as the
Registrar may allow, any person may give notice of opposition to the application on form TM – 39 and may also send therewith a
statement of his objections. The notice and the statement, if any, shall be sent in
triplicate. In case there are any registered users under the registration of the trademark
in question, such notice and statement shall also be accompanied by as many copies thereof
as there are registered users. A copy each of the notice and statement shall be
transmitted forthwith by the Registrar to the registered proprietor and to each registered
user, if any, and within two months from the receipt by the registered proprietor of such
copies he shall send to the Registrar on form TM
– 6 a counter-statement in triplicate of the grounds on which the opposition is
contested. If the registered proprietor sends such a counter-statement the Registrar shall
serve a copy thereof on the person giving notice of opposition and the provisions of rules
53 to 60 shall apply mutatis mutandis to the further proceedings on the opposition. The
Registrar shall not refuse the application merely because the registered proprietor has
not filed a counter-statement. In any case of doubt any party may apply to the Registrar
for directions.
3.) If there is no opposition within the time specified in sub-rule (2),
the Registrar shall, after hearing the applicant if he so desires, allow or refuse the
application and shall communicate his decision in writing to the applicant.
103.)Decision
– Advertisement – Notification.
If the Registrar decides to allow the application he shall alter the mark in the register
accordingly and insert in the journal a
notification that the mark has been altered. If the application has not been advertised
under rule 102, he shall also advertise in the journal
the trade marks as altered.
104.)Printing
block and fee for advertisement.
In connection with an application to alter a registered trade mark the
Registrar may at any time call on the applicant to supply a printing block satisfactory to
the Registrar and suitable for advertising the mark with the addition or alteration as
aforesaid, together with the prescribed fee, for excess space, if any, if in the opinion
of the Registrar an advertisement describing in words the addition or alteration would not
be likely to be under stood by persons interested in the matter.
Re-classification of goods in respect of existing registration
105.)Re-classification
in respect of existing registration.
1.) On the classification set forth in the Fourth schedule being amended, the registered
proprietor of a trade mark may apply to the Registrar on form TM – 40 for the conversion of the specification relating to his trade mark,
so as to bring that specification into
conformity with the amended classification. The application shall include a request for
the like conversion of the specification
in respect of any registered users under that registration, and the registered proprietor
shall serve a copy of the application on the registered user of users of the trade mark,
if any.
2.) The Registrar shall, thereupon, notify in writing to the registered
proprietor and to the registered user or users, if any, a proposal showing the form which, in the Registrar’s view, the
amendment of the register should take in consequence of the proposed conversion. Two or
more registrations of a trade mark having the same date and in respect of goods which fall
within the same class under the amended or substituted classification, may be amalgamated
upon conversion in accordance with the rule.
3.) The proposal referred to in sub-rule (2) shall be advertised in the journal.
4.) Notice of opposition to such proposal shall be given on form TM – 41 in triplicate within one month
from the date of the advertisement and shall be accompanied by a statement in triplicate
showing how the proposed amendment would contravene the provisions of sub-section (1) of section 59. Where there are any registered users
under the registration of the trade mark in question, such notice and statement shall also
be accompanied by as many copies thereof as there are registered users. The Registrar
shall forthwith send a copy each of the notice and the statement to the registered
proprietor and to each registered user, if any, and within two months from the receipt by
him of such copies the registered proprietor may send to the Registrar on form TM – 6 a counter-statement in triplicate
setting out fully the grounds on which the opposition is contested. If the registered
proprietor sends such counter-statement the Registrar shall serve a copy thereof on the
person giving notice of opposition and the further procedure for the disposal of the
opposition shall be regulated by the provisions of rules 53 to 60 mutatis mutandis. In any
case of doubt, any party may apply to the Registrar for directions.
5.) If there is no opposition within the time specified in sub-rule (4),
or in case of opposition if the conversion of the specification is allowed, the proposal as
allowed shall be advertised in the journal,
and all necessary entries shall be made in the register. The date when such entries are
made in the register shall be recorded therein. Any entry made in the register in
pursuance of this sub-rule shall not affect the date of the renewal of registration under section 25, which shall be determined in the same
manner as before the allowance of the conversion.