The Register of Trade Marks is not an immutable document. While registration confers significant legal presumptions in favour of the proprietor and is treated as prima facie evidence of validity under Section 31 of the Trade Marks Act, 1999, the register is not beyond challenge. Marks may find their way onto the register through error, misrepresentation, changed circumstances or the passage of time that renders a once distinctive mark generic or a once-accurate entry misleading. The law must provide a mechanism to correct such entries both to protect traders whose rights are prejudiced by an incorrect register and to preserve the integrity of the register as a reliable instrument of commercial information.
That mechanism is found in Sections 57 to 60 of the Trade Marks Act, 1999, which together constitute the statutory framework for rectification proceedings. Rectification is the process by which the Register of Trade Marks is corrected by the addition of entries that ought to be there, by the variation of entries that are inaccurate or incomplete or by the removal of entries that ought never to have been made or that have ceased to serve any legitimate purpose. It is a remedy of broad scope, directed at the register itself rather than at the conduct of any individual trader and it operates as a critical counterbalance to the presumption of validity that attaches to registered marks.
Rectification proceedings are among the most significant post-registration mechanisms in Indian trademark law. They are frequently employed in commercial disputes as a counterclaim in infringement litigation, as a standalone proceeding to clear the register of a conflicting mark or as a remedy for the proprietor of a prior mark that was wrongly passed over during examination. Understanding the statutory framework, the grounds available, the procedure for invoking them and the case law that has given them their operational content is essential for any practitioner or party engaged with the Indian trademark system at a sophisticated level.
The Statutory Framework – An Overview
Sections 57 to 60 of the Trade Marks Act, 1999 form a discrete cluster within the Act dedicated to the rectification of the register. Section 57 is the primary provision, conferring jurisdiction on the High Court and the Registrar to order rectification and setting out the grounds on which it may be sought. Section 58 deals with the correction of clerical errors and other formal mistakes in the register. Section 59 addresses the alteration of a registered trademark – a distinct but related procedure that permits the proprietor to modify the mark within defined limits. Section 60 governs the adaptation of entries in the register when the Nice Classification of goods and services is revised. Together, these provisions comprehensively address the circumstances in which the register may and must be corrected.
Section 57 – Power to Cancel or Vary Registration and to Rectify the Register
Section 57 is the cornerstone of the rectification framework. It provides, in sub-section (1), that any person aggrieved by the absence of an entry in the register, by any entry made in the register without sufficient cause, by any entry wrongly remaining on the register or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar and the tribunal may make such order for making, expunging or varying the entry as it thinks fit.
Section 57(2) provides that the tribunal may decide any question that it may be necessary or expedient to decide in connection with the rectification of the register.
Section 57(3) provides that the Registrar may, on his own motion, after giving notice in the prescribed manner to the registered proprietor, apply to the Appellate Board for the rectification of the register and the Appellate Board may make such order thereon as it thinks fit.
Section 57(4) provides that any order of the Appellate Board rectifying the register shall direct that notice of the rectification be served on the Registrar in the prescribed manner and that the Registrar shall, on receipt of the notice, rectify the register accordingly.
It is important to note that following the abolition of the Intellectual Property Appellate Board by the Tribunals Reforms Act, 2021, the jurisdiction previously vested in the IPAB under Section 57 has been transferred to the High Courts. References to the Appellate Board in the statute must therefore now be read as references to the High Court having jurisdiction. Applications for rectification may be made either to the High Court or to the Registrar, depending on the circumstances – a choice that carries strategic implications discussed further below.
Who May Apply – The Aggrieved Person Standard
The right to apply for rectification under Section 57(1) is available to any person aggrieved by the state of the register. The phrase “person aggrieved” has been interpreted broadly by the courts, reflecting the public interest dimension of the register’s accuracy. It is not confined to persons who have a direct proprietary interest in a competing mark – it extends to any person who can demonstrate that the presence or absence of an entry on the register prejudicially affects their legal rights or commercial interests.
The Supreme Court addressed the scope of the aggrieved person standard in the landmark decision of Hardie Trading Ltd. & Anr. v. Addisons Paint & Chemicals Ltd. ((2003) 11 SCC 92), where it held that the expression “person aggrieved” must be construed liberally to include any trader who is or may be in any way prejudiced in the use of their own mark by the entry complained of. The Court rejected a narrow interpretation that would confine standing to registered proprietors of competing marks, affirming that the right to seek rectification is a broadly available remedy rooted in the public interest in a clean and accurate register.
This liberal interpretation has been consistently followed. A trader who wishes to use a mark but is prevented from doing so by an existing registration is a person aggrieved. A party engaged in infringement proceedings who challenges the validity of the plaintiff’s registration as a counterclaim is a person aggrieved. A licensee whose rights depend on the validity of a registration is a person aggrieved. Even a consumer organisation or a public body with a legitimate interest in the accuracy of the register may, in appropriate circumstances, qualify as a person aggrieved.
Grounds for Rectification – Absence of Entry
The first ground identified in Section 57(1) is the absence of an entry in the register that ought to be there. This ground covers situations where the register fails to reflect a right or interest that the law requires to be recorded. A registered proprietor whose name has not been entered on the register, a licensee whose licence has not been recorded or an assignee whose title has not been transferred on the register may apply for rectification on this ground to compel the making of the missing entry.
The practical significance of the absence of entry ground extends beyond administrative convenience. Certain rights under the Trade Marks Act, 1999 – including the right of a registered user to take proceedings for infringement under Section 53 are contingent upon the recording of the relevant interest on the register. An unrecorded assignee or licensee may find that their practical ability to enforce the mark is constrained and rectification to include the missing entry is the appropriate remedy.
Grounds for Rectification – Entry Made Without Sufficient Cause
The second ground – an entry made in the register without sufficient cause – is the ground most commonly invoked in contentious rectification proceedings. It covers situations where a trademark was placed on the register in circumstances that did not justify registration – where the mark was not distinctive at the time of registration, where it was registered in violation of the absolute or relative grounds of refusal, where the applicant had no bona fide intention to use the mark or where the registration was procured by fraud or misrepresentation.
This ground extends to cases where the registration was procedurally valid at the time it was made but where the substantive requirements for registration were not in fact satisfied. The examination process, however diligently conducted, is not infallible. Marks may slip through examination without the examiner appreciating the full significance of prior use, prior reputation or descriptive character. Section 57 provides the means to correct those errors post-registration.
The Delhi High Court addressed the scope of this ground in Kabushiki Kaisha Toshiba v. Toshiba Appliances Co. (AIR 1994 Del 278), where it held that a registration obtained through misrepresentation of the facts including misrepresentation about the applicant’s right to use the mark or the absence of conflicting earlier use – is a registration made without sufficient cause and is properly the subject of rectification. The Court emphasized that the integrity of the register depends on the accuracy of the information on which registrations are based and that registrations procured through dishonest means cannot be permitted to stand.
Grounds for Rectification – Entry Wrongly Remaining on the Register
The third ground – an entry wrongly remaining on the register – addresses situations where a registration was valid when made but has since ceased to be justified by the circumstances. This ground encompasses two of the most commercially significant categories of rectification: non-use and genericness.
Under Section 47 of the Trade Marks Act, 1999, a registered trademark is vulnerable to cancellation for non-use where it has not been put to genuine use in relation to the goods or services for which it is registered for a continuous period of five years and one month preceding the application for cancellation. Non-use cancellation is technically a distinct procedure under Section 47, but it is closely related to the rectification framework and is frequently pursued alongside or as an alternative to rectification under Section 57. The practical objective – removal of a mark from the register – is the same and applications on non-use grounds are often framed as applications for rectification under Section 57 read with Section 47.
Genericness – the degeneration of a registered mark into the common name for a product or service – is a ground for rectification under Section 57(1) as an entry wrongly remaining on the register. Section 47(1)(b) specifically provides that a registration may be cancelled where the mark has become the common name in trade for a product or service in respect of which it is registered. A mark that has become generic no longer performs the fundamental trademark function of distinguishing commercial origin and its continued registration would deprive competitors of the right to use ordinary trade language to describe their own goods.
The Supreme Court addressed the genericness issue in the context of passing off and the limits of trademark protection in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. ((2001) PTC 300 SC), where it observed that marks which become the common name for a class of goods lose their capacity to function as trademarks and cannot be enforced as such. This principle, applied to registered marks, supports the removal of such marks from the register under the wrongly remaining ground.
Grounds for Rectification – Error or Defect in an Entry
The fourth ground error or defect in an entry covers inaccuracies, mistakes and omissions in the information recorded on the register in respect of a valid registration. This includes errors in the proprietor’s name or address, errors in the specification of goods or services, errors in the date of registration or date of first use and any other inaccuracy in the details recorded for a mark that is otherwise validly registered.
This ground is less contentious than the previous two – it is typically invoked to correct administrative errors rather than to challenge the validity of a registration – but it is important in practice because the details recorded on the register have legal consequences. A specification of goods or services that is broader than the actual use of the mark may give the proprietor enforcement rights that extend beyond their legitimate commercial activity. An error in the proprietor’s name may create difficulties in establishing the chain of title in assignment or licensing transactions. Rectification on this ground ensures that the register accurately reflects the true position.
The Jurisdiction Question – High Court or Registrar
One of the most practically significant aspects of the rectification framework is the choice between applying to the High Court and applying to the Registrar. Section 57(1) confers concurrent jurisdiction on both and the choice has strategic implications that applicants and practitioners must consider carefully.
The High Court is the appropriate forum for rectification applications that raise complex questions of law, involve significant commercial interests or are connected with pending infringement or passing off proceedings. High Court proceedings offer the advantages of formal procedural safeguards, the ability to cross-examine witnesses and the development of a reasoned judgment that addresses the legal issues in depth. They also offer the possibility of interim relief – an injunction restraining the continued use of the mark pending the outcome of the rectification proceedings – which the Registrar lacks the power to grant.
The Registrar is the appropriate forum for more straightforward rectification applications, particularly those involving non-use cancellation under Section 47, correction of formal errors or cases where the issues are primarily factual rather than legal. Proceedings before the Registrar are generally faster and less expensive than High Court proceedings and the Registry’s administrative expertise in trademark matters is a practical advantage in cases that turn on registry practice.
Where rectification is sought as a counterclaim in infringement proceedings before the High Court, the High Court has jurisdiction under Section 124 of the Act to adjudicate both the infringement claim and the rectification counterclaim in the same proceedings. This procedural integration avoids the delay and expense of parallel proceedings and is the most efficient way of resolving disputes where the validity of the plaintiff’s registration is genuinely in issue.
The Delhi High Court’s observations in Patel Field Marshal Agencies v. P.M. Diesels Ltd. ((2018) 2 SCC 112) are particularly instructive on the relationship between infringement proceedings and rectification. The Supreme Court, affirming the Delhi High Court’s approach, held that where a defendant in infringement proceedings challenges the validity of the plaintiff’s registration, the rectification question must be resolved before the infringement claim can proceed and the court is the appropriate forum for that resolution where the parties are already before it.
Section 58 – Correction of the Register
Section 58 of the Trade Marks Act, 1999 provides a narrower but practically important power to correct the register. It authorises the Registrar to correct any clerical error in any entry in the register, to correct any error in the name, address or description of the registered proprietor, to enter any change in the name, address or description of the registered proprietor, to cancel the entry of a trade mark on the register, to strike out any goods or services from the specification of a registered trademark and to enter a disclaimer or memorandum relating to a registered trademark.
The distinction between Section 57 and Section 58 is essentially one of scope and controversy. Section 57 is the provision for contested rectification – it is invoked where the applicant seeks to challenge the validity or accuracy of a registration in the face of the registered proprietor’s interest. Section 58 is the provision for uncontested or administrative correction – it is invoked where the registered proprietor or a third party seeks to correct an error or update an entry without challenging the registration itself.
The Registrar exercises the Section 58 power on application by the registered proprietor or, in appropriate cases, on his own motion. The power to strike out goods or services from the specification is particularly significant in the context of partial cancellation – where a proprietor wishes to narrow the scope of their registration or where a third party has established that the mark has not been used in relation to certain goods within the specification.
Section 59 – Alteration of Registered Trademark
Section 59 of the Trade Marks Act, 1999 permits the registered proprietor to apply for the alteration of a registered trademark in limited circumstances. The provision recognizes that commercial needs evolve – a proprietor may wish to modernize or update a mark, correct an error in the representation or make minor modifications to the mark as registered.
However, the power to alter a registered trademark under Section 59 is strictly circumscribed. The alteration must not substantially affect the identity of the trademark as it was registered. This limitation is fundamental – it prevents the proprietor from using the alteration mechanism to make substantive changes to the mark that would, in effect, amount to the registration of a new and different mark without undergoing the full examination and opposition process. An alteration that would change the dominant feature of the mark, introduce a new distinctive element or materially alter the overall impression of the mark falls outside the scope of Section 59 and must instead be addressed by filing a new application.
The application for alteration is made to the Registrar, who may advertise the proposed alteration in the Trade Marks Journal and invite opposition before making an order for alteration. The advertisement and opposition procedure mirrors, in abbreviated form, the procedure applicable to new applications, ensuring that third parties whose interests might be affected by the alteration have an opportunity to be heard.
Section 60 – Adaptation of Entries to New Classification
Section 60 of the Trade Marks Act, 1999 addresses a specific administrative scenario – the revision of the Nice Classification of goods and services. The Nice Classification is periodically updated by the International Bureau of WIPO, with new editions introduced at intervals. When a new edition alters the boundaries of existing classes – moving goods from one class to another, creating new classes or abolishing existing ones – the entries on the Indian register that were made under the earlier edition may no longer accurately reflect the current classification.
Section 60 empowers the Registrar to amend the register to adapt existing entries to the current classification, either on application by the registered proprietor or on the Registrar’s own initiative. The adaptation must be carried out in a manner that preserves the substantive scope of the original registration – the proprietor’s rights in respect of particular goods or services are not affected by the reclassification.
The practical importance of Section 60 has increased with the growing harmonization of Indian trademark practice with international standards. As India participates more fully in the Madrid System and other international trademark frameworks, the alignment of domestic classification with the current edition of the Nice Classification becomes commercially and legally significant.
The Procedure for Rectification Applications
Rectification applications are governed procedurally by the Trade Marks Rules, 2017. An application to the Registrar for rectification is made on Form TM-O, accompanied by the prescribed fee. The application must set out the grounds on which rectification is sought, supported by a statement of case and any evidence that the applicant proposes to rely upon.
Upon receipt of the application, the Registrar serves a copy on the registered proprietor, who has the right to file a counter-statement in opposition to the application. The exchange of evidence by affidavit follows, after which a hearing is convened and a decision issued. Where the application is made to the High Court, the procedure is governed by the relevant Rules of the High Court, though the substantive legal standards remain those of the Trade Marks Act, 1999.
The burden of proof in rectification proceedings rests, as a general rule, on the applicant – the party seeking to disturb the registered position bears the onus of establishing the ground on which they rely. However, where the ground of rectification is non-use, Section 47 places a qualified evidential burden on the registered proprietor to demonstrate genuine use of the mark during the relevant period once the applicant has established a prima facie case.
The standard of proof is the civil standard – the balance of probabilities. A rectification applicant does not need to establish their case beyond reasonable doubt. They must demonstrate that it is more likely than not that the ground of rectification is made out.
Non-Use Cancellation – The Section 47 Dimension
While Section 47 is technically a separate provision from Section 57, the two operate closely together in practice and no account of rectification proceedings is complete without addressing non-use cancellation. Section 47 provides that a registration may be cancelled where the mark was registered without any bona fide intention to use it and there has in fact been no use of the mark up to a date three months before the application for cancellation or where up to a date three months before the application for cancellation a continuous period of five years or more has elapsed during which the mark was registered but not put to genuine use in relation to the goods or services for which it is registered.
The non-use ground is one of the most commercially significant tools in the trademark practitioner’s arsenal. A cluttered register – full of marks that are registered but not genuinely used – impedes the ability of new traders to adopt marks without conflict and distorts the examination process by generating unnecessary relative ground objections. Non-use cancellation is the mechanism through which the register is kept current and through which marks that have ceased to serve any commercial function are cleared away to make room for active traders.
The Bombay High Court addressed the requirements for genuine use in Nestle India Ltd. v. Mood Hospitality Pvt. Ltd. ((2010) 43 PTC 514 (Del)), where the court examined what constitutes sufficient use to defeat a non-use cancellation application, holding that use must be genuine commercial use in the ordinary course of trade – not token use designed merely to preserve the registration. Sporadic or minimal use, particularly where it appears to have been contrived for the purpose of defending a cancellation application, will not satisfy the genuine use requirement.
Bad Faith and Rectification
Bad faith in the procurement of a registration is a ground for rectification under the entry made without sufficient cause limb of Section 57(1). A registration obtained through deliberate misrepresentation – about the date of first use, about the absence of conflicting prior use or about the applicant’s entitlement to the mark – is a registration made without sufficient cause and is liable to be removed.
Bad faith also encompasses the registration of marks that the applicant knew, at the time of filing, to belong morally or commercially to another – the registration of a mark that copies a foreign mark with an established international reputation before that mark’s owner has entered the Indian market, the registration of a mark that reproduces the trade name or unregistered mark of a competitor or the registration of a mark in multiple classes without any genuine intention to use it in those classes, for the purpose of blocking competitors.
The Delhi High Court’s analysis in Hindustan Unilever Ltd. v. Ashique Chemicals ((2010) 44 PTC 180 (Del)) illustrates the approach to bad faith rectification, with the court holding that evidence of deliberate copying and dishonest adoption of a mark established the absence of bona fide intention required for valid registration and that a registration so obtained was properly the subject of cancellation under Section 57.
The Effect of a Rectification Order
Where a rectification order is made whether by the High Court or the Registrar – the Registrar is directed to amend the register in accordance with the order. The effect of the order depends on the nature of the rectification. Where a registration is cancelled, the mark is removed from the register and the exclusive rights conferred by registration cease to exist from the date of cancellation, though the retrospective effect of cancellation may be adjusted by the court or Registrar in appropriate cases.
The cancellation of a registration does not automatically extinguish all rights in the mark. Common law rights arising from use and goodwill survive the cancellation of a registration and a trader whose registration is cancelled may still be able to enforce common law rights in passing off against subsequent users of the mark, depending on the extent of their established reputation. The cancellation extinguishes the statutory right – the exclusive right to sue for infringement but the underlying commercial reputation may continue to be protectable through the common law remedy.
Conclusion
Sections 57 to 60 of the Trade Marks Act, 1999 provide a comprehensive and flexible framework for the correction of the Register of Trade Marks. They reflect the fundamental principle that registration, while creating strong presumptions of validity and conferring valuable exclusive rights, is not irrevocable. The register is a living instrument and its integrity its capacity to accurately reflect the true state of trademark rights in India – depends on the availability of effective mechanisms to correct it when it goes wrong.
Rectification proceedings serve multiple purposes simultaneously. They provide a remedy for traders whose rights are prejudiced by incorrect entries. They serve the public interest in a register that can be relied upon as accurate. They provide a countermeasure against bad faith registrations and speculative filings. And they ensure that marks which have ceased to justify the monopoly rights of registration – through non-use, through genericness or through changed circumstances – are cleared from the register in a timely manner.
For practitioners, rectification is a sophisticated and powerful tool that requires careful strategic thinking about forum, grounds, evidence and procedure. For proprietors, it is both a potential threat requiring attention to the maintenance of genuine use and the accuracy of the register entries and a potential weapon, available to be deployed against competing marks that obstruct legitimate commercial activity. A thorough understanding of Sections 57 to 60 and the jurisprudence that surrounds them is therefore indispensable for anyone engaged seriously with Indian trademark law.
References
- The Trade Marks Act, 1999, Sections 47 and 57–60 – https://ipindia.gov.in/trade-mark.htm
- The Trade Marks Rules, 2017 – https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_68_1_Trade_Marks_Rules_2017.pdf
- Manual of Trade Marks Practice and Procedure, Trade Marks Registry – https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_72_1_TM_Manual.pdf
- Hardie Trading Ltd. & Anr. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92
- Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) PTC 300 (SC)
- Kabushiki Kaisha Toshiba v. Toshiba Appliances Co., AIR 1994 Del 278
- Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112
- Hindustan Unilever Ltd. v. Ashique Chemicals, (2010) 44 PTC 180 (Del)
- Nestle India Ltd. v. Mood Hospitality Pvt. Ltd., (2010) 43 PTC 514 (Del)
- Tribunals Reforms Act, 2021 – https://legislative.gov.in
- TRIPS Agreement, Article 15 – https://www.wto.org/english/docs_e/legal_e/27-trips.pdf
- WIPO Nice Classification – https://www.wipo.int/classifications/nice/en/
Compulsory Licensing Copyright Act Copyright Act 1957 Copyright Infringement Copyright Law Copyright Rules Deceptive Similarity Descriptive Marks India Goodwill Indian IP Framework Indian Patent Law Indian Trademark Law Intellectual Property Law IP Law India Patent Claims Patent Enforcement Patent Infringement Patent law Patent Revocation Patent Rule Patents Act 1970 Pharmaceutical Patents Section 3 Section 29 The Patent Act 1970 Trademark Infringement Trademark Registration Trade Marks Act 1999 Trade Marks Rules 2017 TRIPS Compliance