Trademark In IndiaRectification of Register Under Trademark Act,1999

Rectification of register Under Trademark Act,1999

Provisions of Section 125(1) of Trade Marks Act, 1999  are attracted only when an application for rectification of register is filed by a defendant who is pleading that registration of said trade mark itself is invalid in a suit filed for infringement of trade mark,  or, by a plaintiff who is questioning validity of registration of defendant’s trade mark and by none else.

The relevant provision is as below  :

125. Application for rectification of register to be made to Appellate Board in certain cases.—

(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff’s trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff questions the validity of the registration of the defendant’s trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register and, notwithstanding anything contained in section 47 or section 57, such application shall be made to the Appellate Board and not to the Registrar.

(2) Subject to the provisions of sub-section (1), where an application for rectification of the register is made to the Registrar under section 47 or section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the Appellate Board.

Rectification application, before the filing of such suit ,may be filed either before Registrar or before Appellate Board.

In other words , application for rectification of register under Trademark Act,1999  can be filed only either by a defendent or plaintiff  in a suit filed for infringement of Trademark

[Jagatjit Industries Ltd. v. Intellectual Property Appellate Board, (2016) 4 SCC 381]