Application under section 57 of Trademarks Act 1999

767 votes

You can file the request at any time. However, if you are expecting an infringement suit, I would recommend you to file the rectification application at the earliest. TM-O is a procedural form and you will primarily require providing grounds of rectification. I would require case-specific information for recommending the appropriate strategy.

Advocate Ankush Mahajan LawRato

807 votes

On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. Thank you A. F. Faizi

Advocate Ahmad Fuad Faizi LawRato

587 votes

Section 125 in The Trade Marks Act, 1999 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. So for your question Application under section 57 can be filed before suit for infringement as both are independent to each other. Supreme Court in CIVIL APPEAL NO. 430 OF 2016 titled as "JAGATJIT INDUSTRIES LIMITED vs THE INTELLECTUAL PROPERTY APPELLATE BOARD & ORS. " has discussed the issue at a great length.

Advocate Abhishek Singh LawRato