Legal AdviceTaxationTrademarks

Modification of an Existing Registered Trademark

We at Vakilsearch make managing and protecting your business easier, from trademark protection to company registration. You can benefit from trademark modification services with us.

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What is a Trademark?

The 1999 Trademarks Act governs trademarks in India. A trademark can be a sign, mark, or logo used to identify one manufacturer’s goods from another. It could also include the packaging style, the shape, the alphabet, and any combination thereof.

It is essential to register a trademark to prevent it from being copied by other manufacturers. It could severely impact the goodwill of the company and its sales.

 Trademark Registration

(TM)- Is used to refer to a trademark that is not registered

The trademark that is registered with the government is marked (r)-

(SM), is an acronym for unregistered service trademarks

Only after the registration is completed the person can use R in place of its logo or design. Here are some examples of trademarks:

Modification of Trademark after It is Registered

Section 59 provides the following conditions for the modification of trademarks:

  • The ministry will not allow alteration if the trademark search has to be re-done.
  • If the business name is to be altered, it is permitted
  • If the business’s address is to change, it is permitted
  • If a new license has been registered or revoked, it is permissible
  • It is permissible if the usage or control of the trademark is changed, most commonly in the case of a collective mark.

In the following cases, no alteration is possible:

  • The trademark cannot be altered as a whole. A new trademark application will cover it
  • Although the list of goods or services that can be included in the trademark may be restricted, they cannot be expanded

Procedure to Modify the Trademark (As Per The Trademark Rules 2017)

Any modification to the making, expunging or varying any entry related trademarks or collective trademarks will be done in the form of TM-O.

This form will also include a statement that explains all facts and the reasons for the change.
If the applicant is not a registered trademark user, he must apply to the Trademark Registry.

To obtain their consent (if applicable), the application will be first sent to all trademark users.

The Registrar will then send the application to all registered users within one month. If there are more questions, the Registrar will wait another month.

If there are no counter-attacks within three months of the service, the modification will be made according to section 98 of 2017 trademark rules.

Any query that is raised will be sent to the original applicant. He will then have to defend the alteration as well as its necessity. Once all queries have been answered, the alteration is complete.

A form TMP will be filed with the Registrar if there is any alteration in the business’s registered address.

The Registrar will publish the form TM – P once the application has been submitted. If no queries are received, an alteration will take place. If a query is received, the Registrar will sanction the final alteration.

India’s trademark registration is an essential step in brand building and security. Sometimes, mistakes and errors can occur in applications for TM registration. The Trademarks Act provides provisions to correct details in applications. You can modify your trademark before and after registration.

Register Your Trademark Today

Modifications to Pre-Registration

A trademark applicant can request to amend or correct a trademark application before registering. To do this, fill out trademark Form TM–M with the prescribed fee. This can be done for minor technical changes or corrections to the filing and data entry. However, no amendment or substantial alteration to an application that could substantially alter the proprietor details, specifications of goods or services, and the trademark’s use may be allowed.

Owners often ask if they can modify the logo’s wordmark, logo, or color specification. These changes are not permitted because they fall under the definition of substantial changes. These permitted changes are more of an administrative error. A word mark such as ‘Vakilsearch’ is applied to ‘Vakilsearch.in’, which is an error in data entry by the applicant. These changes are permissible, but we cannot request the addition of a logo or its design to the same application. A new application must be filed for this purpose.

The Registry will decide whether the requested change is substantial after reviewing the application and supporting documents. We provide a list of all permitted and prohibited changes.

The Trademarks Act allows for changes if:

  • The amendment does NOT alter the usage
  • The date of use is unchanged
  • The amendment must not alter details about goods or services.

Permitted Alterations

These changes will not affect the nature of your application. Changes like change in address of the applicant or the service address, deletion or confinement of any item in the specification of goods/services, confinement/limitation in sales of goods/services, division of multiclass application are permitted. After examining the relevant document, the trademark officer can make necessary changes to the system. After an examination, the Registry can direct amendments to applications

Non-permitted changes:

Changes such as the following can alter the substance of the application. Therefore, it is not permitted.

Can I Change My Trademark Logo

Modification of the wordmark, logo and color specifications

Change in user date claimed

Change in Type of Trademark: For example, a trademark application for a wordmark cannot be changed to a label or device. (As shown in the example).

Modification in the class of a trademark

Trade Description of Mark Change: The Registry can direct changes in a few situations, but the Registry has the final say on whether or not to adopt the requested changes.

These are just a few examples of situations where modification is prohibited. In these cases, the applicant may apply for new registration.

You can make modifications to your pre-registration by:

The applicant: In situations where they wish to clarify or rectify an error in applying.

Registry: If there are any errors or omissions, the Registry may send the application back for modification. These applications are marked by the authority ‘Formalities check fail’ The Registrar notifies the applicant that the application was rejected for registration at the next stage.

The applicant can correct the trademark application and submit it again to the Registrar.

 Modification after registration

A different provision governs the modification of trademarks once they have been registered. The TM-P must be filed by the registered proprietor, and the amended/modified trademark shows how the trademark will appear after modification.

If there are any amendments required after the trademark is registered, the corrections can then be initiated by:

The Applicant: In certain situations, they may want to correct errors or add details by amendment. Changes in a business location, name, or company registrations are possible. It is permitted at the discretion of the Registrar.

Trademark Modification Procedure

An applicant can file a modification application in the appropriate form, i.e. TM-M/TM-P, along with supporting documents. Online or physically applying with payment of a prescribed fee is possible. Once submitted, the Registry will review it. The Registry may request any clarification or supporting documents to verify the authenticity of the application.

Conclusion

Modification is an additional burden for both the Registry and the applicant. The modification also slows down the trademark registration process, adding an unnecessary processing time for the registration. Proper precautions must be taken when filing a TM registration application. The TM registration application must be filed with all due care to avoid any mistakes during filing. It should also be renewed periodically. This aspect will ensure that the mark’s distinctive character is maintained.

Vakilsearch

Vakilsearch, India’s leading online legal services provider, is committed to providing hassle-free and straightforward solutions for businesses and corporations across India.

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