Alteration of a Registered Trademark

Last Updated at: Dec 23, 2020
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On August 27, the Supreme Court refused to restrain Patanjali Ayurved from using the trademark “Coronil” for its immunity-boosting products released during the Covid-19 pandemic.  Earlier, a High Court restrained Patanjali from using the trademark in an infringement suit filed by Arudra Engineers. Arudra claimed that they had been owning the trademark ‘Coronil’ since 1993 for their industrial cleaning and chemical products.

 

Before the registration of a trademark, an applicant who has filed a trademark registration application can request for correction or amendment of a trademark application by filing trademark Form- 16 along with the prescribed fee and supporting documents.

 

If you want to make any changes in the trademark application form, it is possible under the Trade Marks Act. However, you need to follow the basic principle before making corrections or alterations in the registered Trade Mark. Alteration in the application is possible unless it changes the identity of the trademark.

A correction in the application for a trademark or an alteration in a registered is possible under the Trade Marks Act. However, a basic principle that needs to be followed: there should be no substantial change in the identity of the trademark.

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The required alterations for registered trademarks are mentioned in Section 59 of the Trade Marks Act, 1999:

1. In order to add or alter the trademark to a degree that does not create an impact on the identity, the registered proprietor of the said trademark can apply to the registrar in the manner prescribed. The decision to alter the same lies with the registrar, who may or may not agree to the change. The registrar can also subject the change to limitations that may deem seem fit.

2. In case such a request for a change is made, the registrar can choose to advertise the application in the proper manner. If this does happen, then the registrar would wait for a prescribed time period for a third party to raise an objection to the advertised application. The registrar would take a final decision after hearing the parties involved.

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There is a certain order pertaining to pre-registration amendment of the trademark application. The order has been issued by the trademarks registry. The order reads as follows:

“Any request for amendment that seeks a substantial alteration in the application for registration of trademark will not be allowed. Changes in details like those of the trademark, proprietor specifications, specification of goods/services (except the omission of existing items), any statement regarding the use of the mark will not be allowed. However, a request for a change in the proprietorship of the trademark on the basis of a valid argument in terms of assignment or transmission; an amendment in the address of the applicant or in the address of the service provider; any deletion or inclusion of an item in goods and services regarding the area of sale, may be considered.”

Basically, the Trade Marks Act does not curtail any scope of change in the trademark as long as it follows certain rules, which have been outlined as follows:

1. The amendment must not alter the use;
2. The date of usage stands as it was;
3. Details of the proprietor see no alteration in the request for the amendment;
4. Details regarding goods and services must not change with the amendment.

If the request for your amendment does not meet the aforementioned rules, we advise you to not make any request for alterations and file an application for a new trademark.

If your request for corrections does not meet the rules and regulations mentioned under the Trade Mark Act, then it is better not to file an application for a new trademark. The decisions regarding the alterations lie in the hand of the registrar. It depends on the registrar whether they agree to the changes or do not.

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A lawyer with 14 years' experience, Vikram has worked with several well-known corporate law firms before joining Vakilsearch.