How to Amend a trademark application

INTRODUCTION

A trademark application, once submitted, can be subjected to specific changes to correct some information that had been provided by the applicant at the time of submission. The correction or an amendment to the application may be necessary for various reasons like incorrect entry or inaccurate filing of the trademark application. The Trade Marks Act 1999 and Rules 2002 authorize rectification of any error in the application made for a trademark. A wrongly registered mark or a mark wrongly remaining on the register may also be rectified under the Trade Marks Act.

An individual distressed by any such fallacy in the entry may file a petition for amendment of the trademark in the register or deletion of the registered mark. The applicant may request changes to make the trademark compliant with the regulations of the Act and to keep up with any changes as may have been brought about by the Act or in the details of the applicant.

PROCEDURE

An applicant who has filed for registration of a trademark, can, before the registration, request an amendment or correction through form-16 along with the documents favoring the claim and the specified fee.  The amendment provision of an application is provided under section 22 of the Trademarks Act 1999. Such an amendment can be made before or even after the acceptance of the application for registration. If the advertisement for the mark has already been issued, then another ad is issued after the changes made which might ultimately delay the filing of the target.

TRADEMARK CORRECTION

Clerical errors in an application can be amended through Trademark Form-16. Request for substantial alteration in the application by way of correction or amendment is not permitted. Furthermore, any rectification which results in a significant change of the details of the proprietor, features of goods and services (excluding erasure of individual items), the disclosure as to the use of the mark shall not be allowed.

The applicant is required to rewrite the parts that they want to amend in the application. The entire section that requires a change should be unambiguous and transparent as to the changes that the applicant seeks to make.

Amendment in the proprietorship of the trademark can be requested when the trademark has been validly assigned or transmitted to someone else. A valid assignment refers to when the assignor transfers rights or benefits to another person. These changes may be allowed depending on each case. Other permissible amendments under the Act include changes in the name, address of the proprietor, withdrawal of an entry of a trademark, changes in the user data as well as the specification of goods or services. 

A change in the class of a trademark may be allowed subject to the facts and circumstances of each case; it is based on the discretion of the registrar. Only fair and reasonable applications are considered by the registrar. For example, if an application for a change is filed after a long time, the registrar may reject it solely on the basis of delay in filing of the application.

A request for an amendment before the issuance of an examination report is considered to be preferential as a fresh examination of the trademark need not be conducted. However, if the amendment is made after the examination report has already been issued, then a new survey needs to be performed by the examiner.

ERROR IN DATA ENTRY

Requests for correction of errors in case of data entry are followed through after the trademark officer has conducted verification of relevant documents. A change is made in the trademark system along with any additional remarks to this effect by the officer concerned. Confirmation of the related documents is done by the trademark office, and the desired changes can be made along with appropriate remarks. If Amendment is moved after receiving an objection from a third party individual, then the person concerned needs to be notified about any such change.

CORRECTION IN TRADEMARK REGISTRATION CERTIFICATE

If an incorrect certificate of registration has been issued and the applicant requests for rectification, an examination of the contents of the request would be considered by the trademark officer based on the relevant documents that the applicant possesses. Upon the acceptance of such an offer, a new registration certificate is issued, and the erroneous registration certificate is rescinded.

CONCLUSION

The applicant of a trademark by virtue of trademark law in India is given the opportunity to correct his application only for small changes and not for changes that significantly affect the individuality of the trademark or the goods or services covered by the form. In case an application is such that it materially alters the application, it is advised that the applicant make a new application instead of amending the previous one. The amendment may be made before or after acceptance of the application for registration.

- Arushi Gupta

 


Posted On: 11 Sep 2019 Home / Legal /  How to Amend a trademark application