Trademark Rectification in India: Removing a Registered Mark for Non-Use or Wrongful Registration

A registered trademark in India can be taken off the register after registration in two ways. An application under Section 57 of the Trade Marks Act 1999 asks the Registrar or the High Court to cancel or vary a registration because the entry was made without sufficient cause or is wrongly remaining on the register, and an application under Section 47 asks for removal because the mark has not been put to bona fide use, in the ordinary case for a continuous five years counted from the date the mark was actually entered in the register, with the count stopping three months before the application. Trademark rectification in India goes to the Registrar of Trade Marks or to the High Court, since the Intellectual Property Appellate Board that used to hear these applications was abolished by the Tribunals Reforms Act 2021. Where an infringement suit is already pending, Sections 124 and 125 send the validity question to the High Court alone and stay the suit while it is decided.

Part of the intellectual property practice at S Jain & Attorneys, Bangalore.

This guide is for a business that finds someone else holding a registration for the brand it built, a company being sued on a registration the plaintiff never used, and a registrant who wants to know what an attack on its mark will look like. It deals with removal after registration. Objections raised by the examiner before registration, and the opposition that follows advertisement in the journal, are covered in the guide on replying to a trademark objection.

What is trademark rectification in India and who counts as a person aggrieved?

Rectification is the statutory procedure for correcting the register, and Section 57 lists what it can reach. Sub-section (1) allows the registration of a mark to be cancelled or varied for any contravention of, or failure to observe, a condition entered on the register. Sub-section (2) is the wider provision: any person aggrieved by the absence or omission of an entry, by an entry made without sufficient cause, by an entry wrongly remaining on the register, or by any error or defect in an entry, may apply for the entry to be made, expunged or varied. Sub-section (3) lets the tribunal decide any question that is necessary or expedient in connection with the rectification, and sub-section (4) lets it act of its own motion after notice to the parties concerned and a hearing. Section 31(1) makes the original registration prima facie evidence of its validity in every legal proceeding, including a Section 57 application, so the applicant carries the burden of displacing it.

The gateway is standing. Both Section 47 and Section 57 open only to a "person aggrieved", and the Supreme Court in Hardie Trading Ltd v Addisons Paint and Chemicals Ltd (2003) held that the phrase carries a different weight in each. For rectification of a wrongful entry the test is liberal, because such an entry is a public mischief and it is in the public interest that the register be kept pure, so anyone in the same trade whose legal rights the entry would or might limit has standing. For removal on the ground of non-use the entry is not wrong in itself, so the applicant must show that in some practical sense it may be damaged or injured if the mark is allowed to stand, and being at loggerheads with the registrant is not enough. Kabushiki Kaisha Toshiba v Tosiba Appliances Co (2008) applied that distinction. A trader that had been served with a cease and desist notice and later sued by the registrant was plainly aggrieved, but the Supreme Court set aside the removal because the courts below had missed the practical-damage limb for goods the applicant had never made and never intended to make.

Key takeaway. Standing is decided before anything else. A rival who wants a wrongly registered mark expunged under Section 57 needs only to show a real interest in the register being correct, but an applicant relying purely on non-use under Section 47 must show practical damage from the mark remaining, and a registration that does not touch the goods it actually trades in will not do.

The three things every rectification applicant must clear before the merits are even reached are set out below.

On what grounds can a registered trademark be cancelled under Section 57?

The grounds are the same defects that would have justified refusing the mark at examination, applied after the event, plus anything that shows the entry was made without sufficient cause. Section 9 supplies the absolute grounds: a mark devoid of distinctive character, one that consists exclusively of indications of the kind, quality, quantity, intended purpose, value or geographical origin of the goods, one that has become customary in the trade, and a mark that deceives or causes confusion, hurts religious susceptibilities, is scandalous or obscene, or is barred by the Emblems and Names (Prevention of Improper Use) Act 1950. Section 11 supplies the relative grounds: identity or similarity to an earlier mark for identical or similar goods where a likelihood of confusion exists, similarity to a well-known mark even for dissimilar goods where use without due cause would take unfair advantage of or be detrimental to its distinctive character or repute, and a mark whose use is liable to be prevented by the law of passing off or by copyright. Section 11(10) directs the Registrar, when considering an application and any opposition, to take into consideration the bad faith of the applicant, and a registration obtained by a distributor, a former partner or a squatter over a brand that belongs to someone else is attacked after the event as an entry made without sufficient cause under Section 57(2).

Two provisions cut the other way and are the registrant's first line of defence. Section 31(2) says that a registered mark shall not be held invalid on a Section 9 ground if it is proved that the mark had been used so as to become distinctive at the date of registration, even if that evidence was never placed before the Registrar. Section 11(11) protects a mark registered in good faith with disclosure of the material information, and a right acquired by good faith use before the Act commenced, from being upset merely because the mark resembles a well-known mark. Rectification is therefore not a second examination. The applicant must prove the defect, and the registrant may answer with distinctiveness acquired by use or with its own good faith.

How does removal for non-use under Section 47 work, and how is it proved?

Section 47(1) gives two distinct grounds, and the Supreme Court in Toshiba held that they are disjunctive, operate in different fields and may be pleaded together or separately. Clause (a) applies where the mark was registered without any bona fide intention on the part of the applicant that it be used for those goods or services, and there has in fact been no bona fide use up to a date three months before the application. Both limbs must be shown, and no minimum period is prescribed. Clause (b) applies where, up to a date three months before the application, a continuous period of five years or longer from the date on which the mark was actually entered in the register has elapsed during which there was no bona fide use by any proprietor for the time being. Under clause (b) the registrant's original intention becomes immaterial. The only question is whether the five-year silence is proved.

Hardie Trading set out the order of proof. The tribunal must be satisfied, in sequence, that the applicant is a person aggrieved, that there has been no use for the continuous statutory period before the application, and that there were no special circumstances excusing the non-use. The applicant carries the onus on the first two, the registrant carries the burden of proving special circumstances, and the third question is never reached unless the second is made out. Hardie also settled what "use" means. Section 2(2)(b) of the Act defines use in relation to goods as use upon, or in any physical or in any other relation whatsoever to, the goods, so use need not be a sale of goods bearing the mark, and advertising the mark in relation to the goods or placing orders for their components can count. In the Toshiba litigation, by contrast, a single newspaper advertisement for goods that did not exist in India was treated by the High Court as no use at all, so the weight of a non-sale use depends on whether real goods stand behind it.

Evidence in a non-use case is built from the absence of things. The applicant typically files an investigator's report on the trade, searches of the registrant's website, marketplaces and product listings, the register extract showing that no registered user or licensee exists, and trade enquiries showing that dealers have never handled goods under the mark. Because the registrant is the only party with positive evidence of use, its counterstatement and affidavit will show invoices, packaging, advertisements, distributor agreements or import records, and the applicant's task is to test whether those documents fall inside the relevant five-year window and relate to the goods actually registered. Section 47 works goods by goods, and the Toshiba proceedings show partial removal in practice, since the Registrar there deleted washing machines and spin dryers from a Class 7 registration while leaving the rest of the specification intact.

Deadline warning. The five years under Section 47(1)(b) run from the date the mark was actually entered in the register, not from the application date or the date on the certificate, and the count stops three months before the removal application is filed. An application lodged before five years and three months have elapsed from the date of entry fails on the calendar alone.

The registrant has four answers. First, Section 47(3) says the applicant cannot rely on non-use that is shown to be due to special circumstances in the trade, which expressly includes restrictions on the use of the mark in India imposed by any law or regulation, and not to any intention to abandon or not to use the mark. Hardie treated an import trade control policy that confined imports of the goods to actual users as such a circumstance, and held that the intention to abandon is an essential component of non-use, so the fora below erred in treating abandonment as if it could exist only where special circumstances of the trade were shown. Second, Toshiba added that the special circumstances defence in sub-section (3) answers only clause (b), never clause (a), and that clause (b) does not bite on a mark that has been used intermittently. Third, the proviso to Section 47(1) lets the tribunal refuse removal where the registrant has made bona fide use of the mark on goods of the same description or on associated goods, unless the applicant has been or could properly be permitted to register a resembling mark under Section 12. Fourth, the power is discretionary. Toshiba treated the applicant's own delay, and the absence of any injury to it, as reasons to leave a registration standing.

Where do you file after the IPAB: the Registrar or the High Court?

Since the Tribunals Reforms Ordinance of 4 April 2021, later replaced by the Tribunals Reforms Act 2021, abolished the Intellectual Property Appellate Board, an application under Section 47 or Section 57 lies to the Registrar of Trade Marks or to the High Court. The Delhi High Court in The Hershey Company v Dilip Kumar Bacha (2024), dealing with a batch of Section 57 petitions filed after the change, treated the word "or" in Sections 47, 57 and 91 as giving the applicant a choice between the Registrar and the High Court, and the same judgment records that the amendment left Section 124 unchanged apart from substituting "High Court" for "Appellate Board". Older copies of the sections still carry the words "Appellate Board", and a strategy note written before 2021 points at a forum that no longer exists. Delhi has an Intellectual Property Division created after the 2021 change under rules notified in February 2022, and rectification petitions there are numbered as C.O. (COMM.IPD-TM) matters. One question remains open. Hershey disagreed with an earlier single-judge view that a petition may be filed in any High Court within whose territory the "dynamic effect" of the registration is felt, and referred the question to a larger bench in February 2024, so the forum nobody disputes is the High Court exercising jurisdiction over the appropriate office of the Registry that holds the registration.

The Registrar route is procedure-driven and is worth setting out step by step.

1. Confirm standing and choose the ground. A wrongful-entry case under Section 57 draws the liberal test, a pure non-use case under Section 47 needs practical damage, and the two may be pleaded together.
2. Fix the relevant date. For Section 47(1)(b) count five years from the date of entry in the register and stop three months before the day you file. For Section 57, identify whether the defect existed at registration or arose later.
3. Collect the evidence before filing: an investigator's report, marketplace and web searches, the register extract showing no registered user, prior-use documents if you rely on Section 11, and any correspondence in which the registrant admits non-use.
4. Identify the appropriate office under Rule 4, which is the office within whose territorial limits the registered proprietor's principal place of business in India, as entered in the register, is situated, with fallbacks to the address for service and to the office where the application was originally made. Which office covers a Bengaluru proprietor is explained in the guide on trademark registration in Bangalore.
5. File Form TM-O with a statement setting out fully the nature of your interest, the facts on which you rely and the relief sought, verified in the manner required for a notice of opposition, with as many copies as there are registered users on the register. The First Schedule to the 2017 Rules as notified in March 2017 prescribed Rs 2,700 for e-filing and Rs 3,000 for physical filing per class, so confirm the current figure on the Registry's fee schedule before paying.
6. The Registrar transmits the application to the registered proprietor, ordinarily within a month, and the proprietor has two months, extendable by one, to file a counterstatement on Form TM-O under Rule 98. If none is filed within three months of receipt, the applicant proceeds straight to evidence under Rule 45.
7. Evidence follows the opposition timetable applied by Rule 98: the applicant's affidavits within two months of the counterstatement, the registrant's within two months after that, further rounds under Rules 46 to 51, then a hearing and a reasoned order.
8. Appeal an adverse order to the High Court under Section 91 within three months of communication. The period is condonable for sufficient cause, but do not plan on it.

What happens when an infringement suit is already pending?

Section 125 changes the forum, and Section 124 changes the timetable. Where in an infringement suit the defendant questions the validity of the plaintiff's registration, or the defendant relies on its own registration under Section 30(2)(e) and the plaintiff questions the validity of that registration, Section 125(1) says the validity issue shall be determined only on a rectification application, and that application must be made to the High Court and not to the Registrar, notwithstanding anything in Sections 47 or 57. Section 124(1) then instructs the court trying the suit. If rectification proceedings are already pending, it stays the suit until they are finally disposed of. If none are pending and the court is satisfied that the invalidity plea is prima facie tenable, it frames an issue and adjourns the suit for three months from the framing of the issue to enable the party to apply for rectification. Under Section 124(2) the trial stands stayed if the application is made within that time or within such extended time as the court allows for sufficient cause. Under Section 124(3), if no application is made in time, the validity issue is deemed abandoned and the suit proceeds on the other issues. The final order in the rectification binds the parties under Section 124(4), and Section 124(5) preserves the court's power to grant interlocutory injunctions, appoint a receiver or attach property during the stay.

The Supreme Court in Patel Field Marshal Agencies v P M Diesels Ltd (2017) decided what those words do to the free-standing right. It held that every question of validity is for the Registrar or the rectification forum and never for the civil court, that where no suit is pending Sections 47 and 57 give an independent statutory right, but that once a suit is pending the rectification forum acquires the matter only if the civil court is satisfied that an issue of invalidity ought to be framed. The court's satisfaction is not "leave" or "permission", it is the statutory gateway that filters out frivolous invalidity pleas. If the civil court finds no triable issue, the remedy is to appeal that order, not to file a fresh rectification application. And if an issue is framed but the party does not apply within the three months or the extended time, the right to raise invalidity is lost for good between those parties, not merely for the purposes of the suit. The Full Bench view of the Delhi High Court that a late rectification application remained maintainable and simply earned no stay was disapproved.

Common mistake. Treating the three-month window under Section 124(1)(ii) as a formality because Section 57 itself carries no limitation period. After Patel Field Marshal, a defendant who pleads invalidity, secures the framing of an issue and then lets the window lapse has abandoned the plea for all purposes, and cannot revive it later by an independent application before the Registrar or the High Court.

Used properly, rectification is the defendant's counter-weapon. A written statement that pleads invalidity with particulars, a request for the issue at the framing of issues, and a petition filed inside the window converts an infringement suit into a stayed suit while the registration itself is tested in the High Court, with the plaintiff's interim relief still in play under Section 124(5). A defendant that holds its own registration is in a stronger position still, since Section 28(3) denies either registered proprietor an exclusive right against the other merely by registration, and Section 30(2)(e) makes use of a registered mark in exercise of the right given by registration an answer to infringement until that registration is removed.

What I check first in a rectification matter

In practice the first hour on a rectification file goes on three dates and one document. The dates are the date the mark was actually entered in the register, which fixes the earliest day a Section 47(1)(b) application can succeed, the date of any suit and of any order framing an issue, which fixes whether the three-month window under Section 124 is running or has already closed, and the date of the applicant's own first use, which decides whether Section 11 and passing off are available at all. The document is the register extract, because it shows the specification of goods against which use must be measured, the conditions and limitations entered on the register that Section 57(1) enforces, and whether any registered user exists whose use will be attributed to the proprietor. Clients often arrive with a strong sense of grievance and a weak sense of standing, and the Hardie and Toshiba line of cases means an applicant who cannot show practical damage from the registration for the goods it actually trades in will lose before the merits are reached. Timelines are indicative only. A contested application before the Registrar commonly takes one to three years through counterstatement, evidence rounds and hearing, a High Court petition depends on the bench, and either can be shortened when the registrant fails to counter or agrees in writing to cancellation, which Rule 100 allows the Registrar to act on without a further notice. Professional fees vary with the number of marks and classes and the volume of evidence, and a matter that needs an investigator's report and several rounds of affidavits costs a multiple of an uncontested non-use application.

The points that decide most rectification files are collected below.

Frequently Asked Questions

This article is for general informational purposes only and does not constitute legal advice. Consult a qualified advocate for advice on your specific situation.

Related Guides

This guide is part of the intellectual property practice resources on registering, enforcing and challenging trademarks in India.

• How to Reply to a Trademark Objection in India
• Trademark Infringement in India: Tests, Remedies and Damages
• Passing Off Versus Trademark Infringement: The Practical Difference
• Well-Known Trademarks in India: Cross-Class Brand Protection
• Trademark Registration in Bangalore: Cost, Process, Timeline
• Trademark Classes in India: The NICE Classification and How to Choose