Can You Amend a Registered Trademark?

Last Updated at: August 01, 2020
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Can you Amend a registered Trademark?

Filing a trademark application is simple with Vakilsearch. You don’t need to bother about multiple filings, knowledge of India’s trademark laws, rules, and procedures. And, in case, if corrections are required at an application stage, you can get it done. Many of our clients often ask us whether they can make Amend in their registered trademarks. In this post, we highlight scenarios where you can amend, rectify, or correct your trademark and how to go about it. 

Who is the authority for correcting or altering trademarks?

Under the Trade Marks Act, it is the Controller-General of Patents, Designs & Trademarks who is the Registrar for TradeMarks. An aggrieved applicant has to apply the Registrar for making amends in the application 

In what scenarios would an application for amendment or correction be required?

  1. In case there is an error in the name, address, or description of the registered proprietor of the trademark
  2. To enter any change in name, address, or description of the person who is registered as the proprietor of the trademark. This happens when the trademark owned by one person is assigned to another person or company. 
  3. To change the classification of goods – For example, a trademark for the general class of textiles may be incorrectly filed under the classification “industrial equipment”. The Registrar may also ask an applicant to file a correction suo moto. 
  4. Registrar may also suggest the deletion of a class that doesn’t correspond to the goods or services of the applicant. 
  5. If the figurative elements of the trademark are not classified according to the Vienna Code. 
  6. If the mark closely resembles another mark, includes a misspelling of a word (xtra for extra) 
  7. For cancellation of the entry of a trademark
  8. To remove any goods or classes of goods or services for which the trademark has been registered. For example, a company may exit a segment of its business and therefore, a trademark may not apply to those goods and services of the company. 
  9. To make minor cosmetic changes in the trademark granted.
  10. For updating details missed out by you during application – such as submission of names and addresses of all partners, translation of the mark, remedying errors in classifying goods. To do this, Form TM-16 needs to be filed. 

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Correction in the Certificate of Registration

– For minor errors in the certification of registration – The appropriate form for correction can be filed with a copy of the certificate of registration. Once corrected, a new certificate of registration would be sent to the applicant or his authorised agent. 

– For major errors in the certificate of registration – Examples of major flaws in the registration certificate are the wrong publication of mark, incorrect classification of goods/services, etc. In such a scenario, a proceeding will be initiated under Section 57(4) of the act, by the Tribunal. 

Process for correction in the trademark – What should you keep in mind?

After the appropriate form has registration along with the fee and supporting documents, the following details will also be examined – 

  1. Whether the trademark is valid 
  2. Whether the person applying for the correction or amendment is the registered proprietor of the mark or has valid title to the mark 
  3. In case of amendment arising out of assignment of the mark, whether assignment deed has a sign, stamp, and duly execute.
  4. If there exist disputes regarding the title or ownership of the trademark, whether an affidavit can file by either party 

Alteration of a registered trademark

After you’ve received your certificate of registration of a trademark, you can still submit an alteration that doesn’t substantially affect the identity of the trademark. In such a scenario, the Registrar may advertise the altered trademark (if the need be). If within the time frame, an objection is to such alteration, the Registrar would consider such an objection before deciding whether to allow alteration in your mark. 

Here’s a quick summary of the forms you may have to file on the error sought to have a connection.

  • For minor changes in name or description of the registered proprietor – Form TM 33 
  • For changing the name of the proprietor of the mark altogether – Form TM 23/24 
  • Further, for changes in address of the registered proprietor – Form TM- 34 
  • For cancelling a registered trademark – Form TM – 35 
  • Additionally, for striking out any or some of the goods or services – Form TM – 36 
  • For changes in classification – Form TM- 40
  • Moreover, for alteration in a registered trademark – Form TM -38 

Frequently Asked Questions

1. Can you edit a trademark?

Yes, once given, the trademark can still amend through the filing of Form TM – 38. This has to be accompanied by five copies of what the edited trademark would look like. If the changes have approval, the certificate of registration of the trademark has amendments accordingly. 

2. How do I correct a trademark application?

For clerical corrections in the trademark before the registration of the mark, an applicant can apply online through Form TM-16 accompanied by the prescribed fee. This application can examine and the office of the registrar would enable correction of any error in the application. After verification of documents, a correction would be made. 

3. How do you update a trademark?

A trademark can have update by submitting an online application with the appropriate form number (mentioned above), paying the requisite prescribed fee (usually ranges between ₹500- ₹2500, per mark,) and submitting the relevant supporting documents. 

 

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Can You Amend a Registered Trademark?

395

Filing a trademark application is simple with Vakilsearch. You don’t need to bother about multiple filings, knowledge of India’s trademark laws, rules, and procedures. And, in case, if corrections are required at an application stage, you can get it done. Many of our clients often ask us whether they can make Amend in their registered trademarks. In this post, we highlight scenarios where you can amend, rectify, or correct your trademark and how to go about it. 

Who is the authority for correcting or altering trademarks?

Under the Trade Marks Act, it is the Controller-General of Patents, Designs & Trademarks who is the Registrar for TradeMarks. An aggrieved applicant has to apply the Registrar for making amends in the application 

In what scenarios would an application for amendment or correction be required?

  1. In case there is an error in the name, address, or description of the registered proprietor of the trademark
  2. To enter any change in name, address, or description of the person who is registered as the proprietor of the trademark. This happens when the trademark owned by one person is assigned to another person or company. 
  3. To change the classification of goods – For example, a trademark for the general class of textiles may be incorrectly filed under the classification “industrial equipment”. The Registrar may also ask an applicant to file a correction suo moto. 
  4. Registrar may also suggest the deletion of a class that doesn’t correspond to the goods or services of the applicant. 
  5. If the figurative elements of the trademark are not classified according to the Vienna Code. 
  6. If the mark closely resembles another mark, includes a misspelling of a word (xtra for extra) 
  7. For cancellation of the entry of a trademark
  8. To remove any goods or classes of goods or services for which the trademark has been registered. For example, a company may exit a segment of its business and therefore, a trademark may not apply to those goods and services of the company. 
  9. To make minor cosmetic changes in the trademark granted.
  10. For updating details missed out by you during application – such as submission of names and addresses of all partners, translation of the mark, remedying errors in classifying goods. To do this, Form TM-16 needs to be filed. 

secure your business

Correction in the Certificate of Registration

– For minor errors in the certification of registration – The appropriate form for correction can be filed with a copy of the certificate of registration. Once corrected, a new certificate of registration would be sent to the applicant or his authorised agent. 

– For major errors in the certificate of registration – Examples of major flaws in the registration certificate are the wrong publication of mark, incorrect classification of goods/services, etc. In such a scenario, a proceeding will be initiated under Section 57(4) of the act, by the Tribunal. 

Process for correction in the trademark – What should you keep in mind?

After the appropriate form has registration along with the fee and supporting documents, the following details will also be examined – 

  1. Whether the trademark is valid 
  2. Whether the person applying for the correction or amendment is the registered proprietor of the mark or has valid title to the mark 
  3. In case of amendment arising out of assignment of the mark, whether assignment deed has a sign, stamp, and duly execute.
  4. If there exist disputes regarding the title or ownership of the trademark, whether an affidavit can file by either party 

Alteration of a registered trademark

After you’ve received your certificate of registration of a trademark, you can still submit an alteration that doesn’t substantially affect the identity of the trademark. In such a scenario, the Registrar may advertise the altered trademark (if the need be). If within the time frame, an objection is to such alteration, the Registrar would consider such an objection before deciding whether to allow alteration in your mark. 

Here’s a quick summary of the forms you may have to file on the error sought to have a connection.

  • For minor changes in name or description of the registered proprietor – Form TM 33 
  • For changing the name of the proprietor of the mark altogether – Form TM 23/24 
  • Further, for changes in address of the registered proprietor – Form TM- 34 
  • For cancelling a registered trademark – Form TM – 35 
  • Additionally, for striking out any or some of the goods or services – Form TM – 36 
  • For changes in classification – Form TM- 40
  • Moreover, for alteration in a registered trademark – Form TM -38 

Frequently Asked Questions

1. Can you edit a trademark?

Yes, once given, the trademark can still amend through the filing of Form TM – 38. This has to be accompanied by five copies of what the edited trademark would look like. If the changes have approval, the certificate of registration of the trademark has amendments accordingly. 

2. How do I correct a trademark application?

For clerical corrections in the trademark before the registration of the mark, an applicant can apply online through Form TM-16 accompanied by the prescribed fee. This application can examine and the office of the registrar would enable correction of any error in the application. After verification of documents, a correction would be made. 

3. How do you update a trademark?

A trademark can have update by submitting an online application with the appropriate form number (mentioned above), paying the requisite prescribed fee (usually ranges between ₹500- ₹2500, per mark,) and submitting the relevant supporting documents. 

 

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Avani Mishra is a graduate in law from the National Law Institute University, Bhopal. She qualified the Company Secretary course with an All India Rank 1 and is a recipient of the President’s Gold Medal for her academic distinctions. She also holds a B.Com degree with a specialization in Corporate Affairs and Administration.