Procedure for Amendments in Application for Trademark Registration [Pre and Post Registration]

Introduction

Trademarks play a crucial role in protecting the brand identity and intellectual property of businesses. Trademark registration further solidifies the protection granted to a brand under law and grants statutory protection under the Trade Marks Act, 1999. Hence, it is important for all trademark owners to protect and register their trademarks as per rules and procedure laid down.

However, during the lifecycle of a trademark application, there may arise a need for amendments either pre-registration or post-registration. Understanding what can and cannot be amended, and the procedural requirements for these amendments, is essential for trademark proprietors to maintain the integrity and legal standing of their marks and our Trademark Lawyers can assist you with the same. This article provides a comprehensive guide on the amendments that can be made to an application for trademark registration, both pre and post-registration, the forms used, and the fees involved.

1. What can be amended in a Trademark application (pre-registration)?

An amendment application can be filed in trademark registration for mere clerical errors. However, substantial mistakes or errors cannot be amended. The following can be amended in a trademark application:

1. Amendment in the proprietorship of the trademark due to valid assignment or transmission.
2. Change in address of the applicant or the address of service.
3. Removal of any items stated in the specification of goods and/or services.
4. Limitation of the scope of goods and/or services.
5. Division of multiclass applications to single class applications.
6. What cannot be amended in a Trademark application (pre-registration)?

The following cannot be amended in an application for trademark registration:

1. Details of the Proprietor (except certain changes in name or address with legal documents supporting the same)
2. Specification of goods and services (except for the removal of some items).
3. Any information regarding the use of the mark.
4. Which particular form is used to file an application for amendment (pre-registration)?

Form TM-M is used for filing an amendment application. It can be uploaded online. The fee for filing Form TM-M is Rs 900 for e-filing and Rs 1,000 for physical filing.

4. Who can initiate the pre-registration amendment application?

The pre-registration amendment application can be initiated by the Registrar (if any errors are found), the Registered Proprietor, and the Registered User.

5. What can be amended in a Trademark application (post-registration)?

A registered proprietor can apply for an amendment under Section 58 (1) of the Trademarks Act, 1999. The registrar will, on receiving the application for amendment, make necessary amendments. Additionally, an application by the registered user can also be made for amendment in a trademark. In such cases, the registrar shall make the necessary amendments after notifying the registered proprietor.

6. Is there an option to upload the amendment application form online?

Yes, the amendment application can be filed online through Comprehensive e-filing services on the IP India website [https://ipindiaonline.gov.in/trademarkefiling/user/How-To-Register.aspx], as well as offline at the Registry’s Office.

7. What all things can be amended in a Trademark application (post-registration)?
8. Correction/change in the name, address, or description of the registered proprietor.
9. Cancellation of an entry in the Trademark registry.
10. Change in proprietorship by way of Transfer or Assignment
11. Conversion of Specifications
12. Which particular form is to be used to file an application for amendment (post-registration)?

Form TM-P: This form is used for amendments in the name, address, or description of the registered proprietor or user.

9. What are the fees for amendment (post-registration)?

Form TM-P: For e-filing Rs 9000/- and Rs 10,000/- for physical filings.

10. Who can initiate post-registration amendments?

Post-registration, only the registered proprietor and the registered user can initiate the amendment application.

11. What documents are required for amendment applications for a change of name?
12. A scanned copy of the Power of Attorney with the new name.
13. A certified copy of company registers as proof of change of name, in case of a company.
14. What documents are required for amendment applications for a change of address?
15. A scanned copy of the Power of Attorney, which should mention the new address of service of the trademark.
16. A certified claim in the company letter stating that the trademark owner has changed the address of service.
17. Who accepts or rejects the amendment application of the trademark?

The Registrar of the Trademarks Registry, after examining and scrutinizing the amendment application, will either accept or reject the application.

14. What all things cannot be amended in the Trademarks application?

The following things cannot be amended in the Trademarks application:

1. Colour specification:The colour specification cannot be amended as it forms an integral part of the visual identity of the trademark. Changing it could mislead consumers and affect the distinctiveness of the mark.
2. Word mark:The word mark represents the text or wording that constitutes the trademark. Amending the word mark would essentially mean altering the core identity of the trademark, which is not permissible.
3. Logo:The logo is a crucial element of the trademark’s visual representation. Allowing changes to the logo could confuse consumers and would essentially mean altering the core identity of the trademark, which is not permissible.
4. User Date:The user date indicates when the trademark was first used in commerce. Altering this date could misrepresent the trademark’s history and affect the legal rights and priority claims of the proprietor.
5. Type of Trademark:The type of trademark (e.g., word mark, logo, sound mark) defines the nature of the mark in which the protection is sought. Changing the type of trademark would fundamentally alter the scope of protection and is therefore not allowed.

Conclusion

Amending an application for trademark registration, whether pre or post-registration, requires careful attention to detail and adherence to the procedural requirements set forth by the Trademarks Act and the Rules of the Trademarks Registry. By understanding what can and cannot be amended, and by using the correct forms and processes, trademark proprietors and their agents can ensure their applications and registrations accurately reflect their business needs and legal standings. This guide aims to provide clarity and assistance to those navigating the complexities of trademark amendments, helping to protect and maintain the integrity of their valuable intellectual property.

By – Akruti Jha