The Alteration of the Registered Trademark

Alteration of the Registered Trademark Trademark is a mark which distinguishes one goods to another; it can be a word, name, get-up used in relation to particular goods to indicate the source and origin of the goods. Section 2 (zb)[1] defines the term ‘Trademark’ means a ‘mark capable of being represented graphically and which is capable of distinguishes the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors. This above definition clearly explains that the main purpose of the Trademark is to guiding the customers in his decision to buy the goods. Apart from that there are other functions also like

• It identifies the Product and its origin.eg. ‘Brooke bond’ identifies tea originating from the company manufacturing tea or marketing it under that market.
• It guarantees the quality of the goods. eg. The quality of the tea sold in the package marked under ‘Brooke bond’ would be similar but different with the tea labeled with mark ‘Tajmahal’.
• It advertises the product.eg. LG advertise its product which distinguishes it from the other competitors in the market.
• It creates an image of the product in the mind of the people. eg. McDonald’s creates an image and reputation.

Registration of the Trademark: Section 18 to 26 of the Trademark Act 1999 deals with the procedure of the registration. Registration of the Trademark confers many rights on the proprietor of the trademarks. The proprietor of the trademark gets an exclusive right to use of the trademark in relation to the goods and services in respect of which the Trademark is registered and also get a right to obtain relief of infringement of the Trademark. Any person who is claiming to be the proprietor of trademark either used by him or it is proposed to be used by him may apply to the registrar of the trademark in the prescribed manner for the registration of the trademark. A single application may be made for the registration of the different class of goods and services but the fees payable should be different in respect of each class of goods and services. After filling an application for the registration of the Trademark, mark will be examined, published and further proceed for the registration if there is no opposition or opposition filled but decided in the favor of the applicant. The Trademark is registered for a period of 10 year and can be renewed for more ten years on the payment of prescribed renewal fees. A proprietor can also apply for the ‘Alteration for Registered Trademark’ under Section 59[2] which defines: (1) A registered proprietor of a Trademark may apply in the recommended manner to the Registrar for leave to alter the Trademark in any manner but not significantly affecting the identity and the Registrar may refuse leave or may grant it on terms and subject to such restrictions as he thinks apt. (2) The Registrar, under this section can advertise the requested alteration in the Trademark, this has to be advertised in the prescribed manner in any case where it appears to the Registrar that it is needed. If within the prescribed time from the date of advertisement the registrar receives an application in the prescribed format from any person as an opposition to the trademark application the Registrar shall decide the matter after hearing from both the parties. (3) Where leave is granted under this section, the Trademark as altered will be advertised in a journal, unless the application has already been advertised under sub-section (2). Section 59(1)[3] clearly states that, any addition or alteration in a manner which affecting the identity of the registered trade mark is prohibited.

• In case the modification is such as needs a fresh search the alteration would not be permitted.
• The introduction of a new element in the trademark of a vivid character is not even allowable.
• The addition of a phrase, describing the product of an already listed trademark is considered to affect the identity of the trademark.
• In the registered trade mark “Otrivin” added a letter ‘e’ to read as “Otrivine” was not permitted.

Otrivin Trade Mark[4]: The proprietor of the registered Trademark ‘OTRIVIN’ was applied to alter the trademark to ‘OTRIVINE’. On this appeal, the tribunal agreed with the Registrar that, the registrar will check if the altered mark will affect the scope of investigation for conflict with other register marks. It was held that, the alteration of ‘OTRIVIN’ to ‘OTRIVINE’ by adding ‘E’ might effectively change the look and the pronunciation of the word, and that the scope of investigations for conflict with other marks on “OTRIVIN” could not be observed as covering “OTRIVINE” just as well. For example: ‘OTRIVIN’ can be separate Trademark and ‘OTRIVIN X’ can be different Trademark. As per the Trademark Act, 1999 the proprietor or any person who has interest on the trademark can opt to rectify or alter the trademark. By filing an application to alter the trademark, certain entries in the register of the trademark can be altered of modified. Any person who has interest on the trademark can file an application to alter the trademark. Even if the person is not a registered proprietor of the trademark he/she can file this application. The procedure of Trademark Alteration: The submitted application for the Alteration of the Trademark should include the reasons, facts and figures to support the requested Alteration. If the request of alteration is raised by any person other than the registered proprietor, then within 60 days (+30 days) from the receipt of the copy of the application, the registered proprietor must send a counter statement to the Registrar. The below 4 fields can be rectified or altered in a registered Trademark:

1. Alteration of the registered address in the register.
2. Correction of entry/entries in a registered trademark in the register.
3. Alteration of the registered Trademark.
4. Re-classification of goods under the registered Trademark.

1. Alteration of the registered address in the register: If the address of a registered trademark is incorrect and needs to be corrected, this can be done by filling the Form TM 34. The Registrar will make the changes once he is satisfied, upon submission of the form. In case the complete address needs to be changed then the registered proprietor needs to submit the Form TM 50 so that the Registrar and make the necessary changes in the Trademark address. 2. Correction of entry/entries in a registered trademark in the register: In case the request has been raised to make correction/alteration/withdrawal of the registered Trademark or to eliminate services or goods from the registered trademark the Registrar would also require supplementary proofs such as affidavits. 3. Alteration of the registered Trademark: To perform alteration in a registered Trademark, the applicant needs to fill the form TM 38 and endow 5 copies of the altered trademark. On recipient of the form and the copies of the altered mark, the Registrar would advertise the new mark and request objections from the public. In case there is no objection raised/received within 90days (+30 days) from the advertisement the Registrar will make the essential alterations in the register. 4. Re-classification of goods under the registered Trademark: The Trademarks are registered in class of goods or services. The registered proprietor can fill the Form-40 to change this class in which his Trademark has been registered. The Registrar would scrutinize to check if there are any existing marks which are similar to the applicant’s mark. In case there are no similar marks, the Registrar will advertise the mark. If there are no objections raised by the public, the Registrar would make the essential changes in the register. With regard to the Alteration of registered Trademark in the Sec 35 of the UK Trademark Act 1938, also defines: (1) The registered proprietor of a trade of registered mark may apply in the prescribed manner to the trade mark. Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit. (2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall,- after hearing the parties if so required, decide the matter. (3) Any decision of the Registrar under this section shall be subject to appeal to the Board of Trade, or to the Court, at the option of the appellant. (4) Where leave as aforesaid is granted, the trade mark as altered shall be advertised in the prescribed manner, unless it has already been advertised, in the form to which it has been altered, in an advertisement under subsection (2) of this section. In British Hoist & Crane Co. Ltd's Trade Mark[5]: The proprietor of the trademark shifted their works from ‘Slough’ to ‘Compton’, so they applied to alter the word “Slough” on the mark with “Compton”. The Court defended the Registrar’s denial of the alteration on the reason that “Compton” is a well-known surname and might not be understood for having any geographical significance. The Registrar held that an alteration is not essentially permissible because it is trivial in respect its relation to the trademark and that by ‘identity’ it meant the features by which the mark will be renowned in its function of identifying the proprietor’s goods from the analogous goods of other traders. He considered that the addition the common surname changed this identity. Examples of Alteration of Registered Trademark If there is any alteration in the name of the registered trademark or address in the mark, leave is granted for alteration of the trademark. For making a change in the name of the address in the trademark is not considered to be a critical particular of the mark. Addition of the phrase ’Limited’ in the existing name of a company is acceptable. But if the name of the company is denoted in the form of a signature, this alteration is not allowed. If the Registrar decides it practical but immoral, he may advertise the application in a Journal before making a decision. Any person may raise a notice of resistance to this application for this amendment by filling the form TM-39 giving the declaration of objection. A copy of the notice and statement is sent by the Registrar to the proprietor of the trademark. The proprietor must file the counterstatement challenging the opposition by filling the form TM-6. Subsequently the provisions of rules 50 to 57 will apply to the further proceedings. Another vital point is that only 4 types of alteration in the registered trademark is allowed and is permissible, namely alteration of the registered address in the register, correction of entry/entries in a registered trademark in the register, alteration of the registered trademark and re-classification of goods under the registered trademark.

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[1] Section 2(zb) of the trademark act 1999 [2] Section 59 of the trademark act 1999 [3] Section 59(1)of the trademark act1999 [4] [1967] RPC 613 [5] (1955) 72 RPC 66 (Ch.D.)

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