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Trademark Rectification

Even if you have successfully registered your trademark, it is still possible for it to be challenged and potentially removed through an invalidation action initiated by a competitor. There are two primary reasons why a trademark may be declared invalid: absolute and relative grounds.

Absolute grounds refer to situations where the trademark was initially registered despite being descriptive of the goods or services it covers. In such cases, the trademark can be canceled. On the other hand, relative grounds come into play when the trademark conflicts with an earlier right that existed during the registration process. If a conflict is identified, the trademark may be invalidated.

While one would expect these issues to be identified during the application stage, they can sometimes go unnoticed until after the trademark is registered. It is possible that the owner of an earlier right was not aware of your application until after it was already registered. In such instances, the only way to remove your trademark would be through invalidation proceedings.

If you have received an application for the invalidation of your trademark, we encourage you to reach out to us. We can help you navigate this situation and find a resolution. Sometimes, it is possible to resolve the conflict without completely losing your trademark. By reaching an agreement with the party challenging your trademark, you may be able to limit the scope of your registration by removing certain goods or services from its specification.

Filing of rectification?

In certain expanding industries, such as the packaged food and pharmaceutical sectors, there is a high demand for trade marks that are relevant to the products involved. It is possible that you are aware of a competitor's registered trade mark which, at the time of registration, was descriptive or generic in nature, and this oversight was not detected by the Intellectual Property Office during their examination of the application. On the other hand, you may have possessed an earlier right that could have served as a solid basis for a successful opposition, but unfortunately, you missed the deadline to file an opposition.

However, in both of these situations, there is still a viable course of action available to you. You can apply to invalidate the trade mark after it has been registered. Moreover, it is also possible to seek the invalidation of a registration specifically for certain goods or services, rather than attempting to invalidate all the classes covered by the registration. It is important to keep in mind that if you are applying to invalidate a registration based on an earlier right, you can only do so if you are the rightful owner of the relevant right or if you are a licensee of that particular trade mark.

If you find yourself in either of these circumstances, tmguru can assist you by providing an opinion on the potential success of your invalidation action before you proceed with filing it. This ensures that you can direct your resources towards challenging only those trade marks that pose significant problems for you, increasing the likelihood of a successful outcome in the invalidation process.

It is also possible to invalidate a registration for certain specific goods or services, rather than all the classes covered by the registration. You should also bear in mind that if you are applying to invalidate a registration on the basis of an earlier right, you can only do this if you own the relevant right, or if you are a licensee of that trade mark.

Ward Trade Marks can help you with an opinion on the likely success of your invalidation action before it is filed, ensuring that you direct your resources towards only invalidating those marks which are real problems for you, and that any invalidation action is likely to work.

What's the difference between TM and ® ?

From our perspective, the abbreviation "TM" could be interpreted as "Totally Meaningless." It is a symbol used to denote an unregistered trade mark, indicating that the word, logo, phrase, or symbol preceding it is being used as a trade mark. However, it holds no legal significance and can be used in any context. Since it is unregistered, it lacks protection under legislation.

If another company uses an unregistered trade mark or something similar, the only legal recourse available is through the tort law of passing off. Proving passing off can be challenging and expensive.

In contrast, the symbol "®" represents a registered trade mark and is protected under law. If anyone else uses the registered trade mark or something similar, they are liable for trade mark infringement.

It is important to note that using the registered symbol without actually registering your trade mark is considered an offense under Trade Marks Act and is punishable.