Komal Verma | Updated: Mar 28, 2020 | Category: Trademark
E – Filing Of Trademark Modification In India
Trademarks and services marks are distinctive symbols, signs, logos, that help the consumer to distinguish between the competing goods or services and are a significant part of the goodwill a company enjoys in the trade.
Trademark is an asset which needs to be protected under Indian laws and regulations. To protect your Trademark from being copied by others, the maker of the word or symbol must apply for trademark registration. Trademark registration can also be done by Electronic medium, which is called E- filing.
And by doing that if any kind of error or mistakes is done then in such situation the remedy is Trademark modification. As a remedy for modification of mistake, there are provisions prescribed under the Trade Marks Act to rectify details submitted in an application. Modification of Trademark is possible before registration and after registration as well.
Such modification can be done before the registration of trademark application and also can be done after the registration is done.
According to Rule 37 Section 22 of Trade Marks Act, 1999, which talks about Correction and Amendment: the Registrar may, on such terms as he thinks just, at any time, whether before or after the registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application.
Therefore, there is a pre-modification and post-modification procedure.
Pre – Registered Modification
An applicant or the agent can file a request for correction or amendment of a trademark application before the trademark is registered by filing trademark Form TM-M along with the prescribed government fee which is Rs. 900 and with supporting documentation that is Power of Attorney (PoA) in pdf form.
This is basically done when there is a correction to be of clerical error or for a minor technical amendment required due to a mistake in filing and data entry. But no major alteration or amendment in an application may be permitted which may completely change an applicant details related to goods and services as to the Logo or Word Mark.
Changes which are allowed and can be done by modification according to The Trade Marks Act, 1999, are as follows:
- Correct any error in the name, address or description of the applicant.
- Changes can also be made in goods and services description if asked by the registrar.
- Change in class – here; the applicant can change the class of goods and services only in cases where the registrar asks to make certain changes.
- Amendment of regulation of a collective mark can also be done.
- Certified copy of an entry in the register under section 137/ copy of a document.
- Correction of clerical error or for Amendment under Rule 37.
- Division of application: under proviso to section 22, if an amendment is made to a single application, involving division of such application into two or more applications, the divided application will retain the date of making the original application.
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The registered proprietor of a trademark may apply in the prescribed manner to the registrar for leave to add to or alter the trademark in any manner not substantially affecting the identity thereof.
Changes related to word logo, wordmark or colour specification in logo, such changes fall under substantial changes and are not allowed. The changes which can be done according to the Trade Marks Act are more of a clerical error. For example, a Word Mark “Corpbiz” is applied as “Carpbiz” (spelt wrongly) which is a data entry error on the part of the person who is applying for it an applicant or an agent. Such changes are allowed, but we cannot make any kind of change in a logo or its design in the same application. For that purpose, a fresh application needs to be filed with the government fee.
Changes Which Are Not Allowed
- Change of Logo, colour specification of the logo and Word Mark
- Change in the category of a mark – an application filed for wordmark cannot be changed to device or colour
- Change in a class of trademark or sound mark or any other category provided.
However, these are some examples of modification which cannot be permitted and for which a fresh filling needs to be done.
Post Registration Modification
According to section 58(1) of the Trademarks act, 1999, Once the trademark application is registered, there is a different rule that governs the alteration of registered trademarks. The registered proprietor of a trademark may apply for the correction of error or amendment as to the name, address, description of the registered proprietor or cancelling the entry of the trademark on the register, or for striking out any goods and services mentioned in the registered trademark.
Form TM-P along with the prescribed government fee, which is Rs. 900 and with supporting documents, i.e. Power of Attorney (PoA), Annexure registration certificate in pdf form.
Who Can Make Amendment?
- A person who declares to be the proprietor of the Trademark in relation to goods and services may apply for the modification of a Trademark.
- The Agent hired by the applicant who is a lawyer or can act as an agent of trademark filing.
The registry might send back the application for modification if any mistake or deletion are discovered. Such applications are marked ‘Formalities Check Fail’ by the authority. The Registrar then sends back the application to the applicant or agent wherever the address for services are mentioned along with the reasons due to which the application is not accepted further for the procedure of the Trademark registration. The applicant can reform the Trademark application and re-submit it with the Registrar.
Conclusion
