Rectification Of Trademarks.
1. What is Rectification?
Rectification of a trademark refers to the process of correcting or modifying entries in the Register of Trademarks maintained by the Trademark Registry. Rectification ensures that the register accurately reflects the valid rights and ownerships of trademarks.
It may involve:
Removal of a mark from the register
Correcting errors in ownership details
Correcting technical errors or lapses in registration
2. Legal Basis in India
Governed by the Trade Marks Act, 1999
Sections 57, 58, 59 deal with rectification:
Section 57: Rectification of the Register on the application of the owner of a registered mark
Section 58: Rectification on the application of any person aggrieved
Section 59: Rectification by the Registrar
3. Grounds for Rectification
Mark should not have been registered in the first place, e.g.:
Lacks distinctiveness
Is identical/similar to an earlier mark causing confusion
Error or omission in the Register, e.g.:
Wrong applicant name
Wrong class or specification
Non-use or abandonment
Contravention of any provision of the Trade Marks Act
4. Legal Effect of Rectification
Restores accuracy in the Trademark Register
Protects public and private interests against misleading registrations
Affects:
Ownership rights
Enforcement rights
Licensing and commercial transactions
II. Leading Case Laws on Rectification of Trademarks
Case 1: Cadbury India Ltd. v. Neeraj Food Products (2007) – Delhi High Court
Facts
Cadbury sued Neeraj Food Products seeking rectification of their registration of a chocolate-related trademark similar to “Dairy Milk”.
Neeraj Food Products argued they were the first registrant.
Issue
Whether registration of a mark deceptively similar to a well-known mark should be rectified.
Judgment
Court held in favor of Cadbury:
Mark registered by Neeraj Food Products was likely to cause confusion
Rectification allowed under Section 57
Principle
✅ Rectification can be sought when a deceptive or confusing mark has been registered, especially against well-known trademarks.
Case 2: Emami Ltd. v. Marico Ltd. (2002) – Delhi High Court
Facts
Dispute over the mark “Fair & Handsome”, which Emami claimed was similar to its registered mark.
Emami sought rectification of Marico’s registration.
Issue
Whether similarity in goodwill and packaging can trigger rectification.
Judgment
Court emphasized:
Likelihood of confusion among the public
Rectification allowed due to misrepresentation in registration
Principle
✅ Rectification applies not just for identical marks, but for similar marks likely to mislead consumers.
Case 3: McDonald’s Corporation v. McDowell & Co. Ltd. (1999) – Delhi High Court
Facts
McDonald’s filed rectification against McDowell for “McDowell’s” marks resembling “McDonald’s”.
Issue
Can a well-known international trademark prevent registration of a deceptively similar local mark?
Judgment
Court allowed rectification:
Public association with the international brand recognized
Prevented confusion among consumers
Principle
✅ Rectification protects well-known marks even if local registration exists.
Case 4: ITC Ltd. v. East India Tobacco Co. (2004)
Facts
Dispute over “Wills” brand cigarettes
ITC sought rectification of registration of deceptively similar mark
Issue
Whether a mark registered in bad faith or without distinctiveness should be removed.
Judgment
Court allowed rectification
Marks registered without bona fide intention can be struck off
Principle
✅ Bad faith in registration is a ground for rectification.
Case 5: Hindustan Unilever Ltd. v. Reckitt & Colman (2003) – Delhi High Court
Facts
HL sought rectification of a similar “Lifebuoy” variant mark
Alleged likelihood of confusion with their existing registration
Issue
Does public perception of similarity justify rectification?
Judgment
Rectification allowed
Emphasized protecting consumer interests
Principle
✅ Rectification is a tool to prevent misleading or confusing entries in the register.
Case 6: Procter & Gamble v. Anchor Health & Beauty Care (2010)
Facts
P&G’s trademark was allegedly copied by Anchor for a similar cosmetic product
P&G filed for rectification
Judgment
Court allowed partial rectification of marks in the register
Recognized distinctiveness and reputation of P&G marks
Principle
✅ Rectification protects well-established and reputed brands, even if infringement is indirect.
III. Observed Trends in Rectification Cases
| Trend | Observation |
|---|---|
| Well-known marks protected | Courts frequently grant rectification to prevent confusion |
| Deceptive similarity is key | Marks need not be identical; likelihood of confusion suffices |
| Bad faith registration challenged | Marks registered without bona fide intention are struck off |
| Public interest and consumer protection | Courts consider potential deception in the market |
| Rectification vs. infringement | Rectification is administrative/legal correction, distinct from enforcement remedies like injunction |
IV. Practical Takeaways
Rectification is preventive and corrective, not punitive.
Can be filed by:
Owner of existing mark (Section 57)
Any aggrieved party (Section 58)
Registrar suo motu (Section 59)
Grounds include:
Confusing similarity
Bad faith registration
Errors in specification or ownership
Well-known brands and public interest play a central role in courts’ reasoning.
Rectification does not automatically award damages but clears the register for enforcement clarity.
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