India: Trade Mark Removal / Rectification in India

Last Updated: 12 March 2018
Practice Guide by S.S. Rana & Co. Advocates

Who can file Application for Removal/Rectification of Trade mark in India?

Sections 47 and 57 of the Indian Trade marks Act provides for the removal and rectification of a registered Trade mark from the Register of Trade marks on an application made by ‘any aggrieved person’.

In order to file an application for removal or rectification of the registered Trade mark, the Applicant would need to prove that he is aggrieved by the registration of the Trade mark.

Where can an Application for Removal/Rectification of Trade mark be filed in India?

An application for removal or rectification of a registered Trade mark is required to be filed before:

  1. The same Trade Marks Registry where the application for registration was filed;


  1. The Intellectual Property Appellate Board in Delhi (for Delhi jurisdiction) and Chennai (for all other jurisdictions).

Rectification Application with the Intellectual Property Appellate Board (IPAB)

Rectification before the Trade Marks Registry

Rectification Application along with the Affidavit and supporting documents is filed on Form 1. 

Rectification Application is filed on Form TM - 26 or TM-43 along with the statement of case.

The Affidavit along with the supporting documents has to be filed along with the Rectification Application.

The Affidavit along with the supporting documents in this case has to be filed after the counter statement i.e. in the third stage.

The order passed by the IPAB can be challenged in the Hon’ble High Court.

The order passed by the Registrar has to be challenged in the IPAB first and then in the Hon’ble High Court. 

On what Grounds can a Registered Trade mark be Removed in India?

Section 47 of the Indian Trade marks Act provides for the removal of a registered Trade mark from the Register of Trade marks on an application made by ‘any aggrieved person’ on the following grounds:

  1. The Trade mark was not registered with a bonafide intention and there has been no bonafide use of the Trade mark upto a date three months before the date of the application;


  1. Upto a date three months before the date of the application, a continuous period of five years from the date of issuance of the registration certificate or longer has passed during which there was no bonafide use of the registered Trade mark.

However, Section 47(3) provides for special circumstances under which non-use of the registered Trade mark may be excused, i.e. if the non-use of a Trade mark is due to special circumstances in the trade like restrictions on the use of the Trade mark in India imposed by any law or regulation and not any intention to abandon or not use the Trade mark.

In a Delhi High Court judgment, Pfizer Products Inc. v. Rajesh Chopra, the plaintiff filed a suit for infringement and passing off action against the defendant wherein the propriety rights of a drug sold under the name of “Geodon” by the defendant were challenged. The plaintiff had registered the same in India on July 18, 1996. The defendant, on the other hand, claimed proprietorship of “Geodon” and use of the Trade mark since June 01, 2003. One of the major contentions of the defendants was that the plaintiff had failed to show use of the Trade mark in India since its registration and hence the Trade mark was liable to be struck off from the Register so that the defendant could legally market his product under the concerned Trade mark. The balance of convenience was in favour of the plaintiff as it is a global player, selling the drugs by this name in over 40 countries. Even though the sale of the concerned drugs in India could not be established, the importance of wrongfully using the Trade mark of such a global player in the field of medicine was established. Hence, the Trade mark was not removed from the Register.

On what other Grounds can a Registered Trade mark be Removed/Rectified in India?


Section 57 of the Indian Trade marks Act provides for the removal/rectification of a registered Trade mark or rectification of the Register of Trade marks on an application made by ‘any aggrieved person’ on the following grounds:

  1. Any contravention or failure to observe a condition of the Trade mark entered in the Register.
  1. Any absence or omission of an entry in the Register, e.g. a disclaimer, a condition or a limitation on the registered Trade mark.
  1. Any entry made without any sufficient cause in the Register, e.g. registration was obtained by fraud or misrepresentation of facts or the Trade mark registered was similar to an already registered Trade mark.
  1. Any error or defect in any entry in the Register.
  1. Any entry wrongly remaining in the Register, e.g. it is contrary to some of the provisions of the Act or is likely to cause confusion amongst the public and trade.

In case of Pendency of a Suit

Although the Registrar of Trade marks is empowered to hear applications for rectification against registered Trade marks, in cases where an infringement suit is pending before a civil court and where the defendant in the suit is contesting the validity of the plaintiff’s Trade mark, the power to hear applications for rectification of such Trade marks vests only with the Intellectual Property Appellate Board and not the Registrar.

Precautions to be taken in order to prevent the rectification or removal of a registered Trade mark from the register:

i. Renewing the Trade mark from time to time.

ii. Preserving the distinctive character of the Trade mark and avoiding its becoming deceptive.

iii. Not keeping the Trade mark unused for a period exceeding five years.

iv. Taking prompt action against or restraining others from infringing the Trade mark.

In a landmark judgment, Mr. B.V. Elango Himachalapathy vs. M/s. Rank Xerox Limited & Others, the IPAB rejected four out of seven rectification applications of B.V. Elango Himachalapathy filed against the registration of “XEROX” as a trade mark on the grounds of the Trade mark becoming generic. B.V. Elango Himachalapathy, owner of a photocopying shop, initiated rectification proceedings in the IPAB after a suit was filed by Xerox Corporation against them in 2004. Elango contended that the word “XEROX” was now used as a common word and has become synonymous with photocopying. Thus, it has come to be used in a generic sense and has lost its distinctiveness and by acquiescence it has fallen into the public domain.

Hon’ble Mrs. Justice Prabha Sridevan observed that “XEROX” had been periodically renewed, without any objection or opposition by any party, and that at least from 2003, Xerox had begun to aggressively protect its Trade mark by campaigning it with advertisements like “If you use Xerox the way you use Zipper, our trade mark could be left wide open” and “If you use Xerox the way you use Aspirin, we get a headache”.

IPAB noted that though the trade mark “XEROX” had been used as a common term by the public, however Xerox Corporation was the owner of the said trade mark as was evident from its renewal and continuous use. Further, it was observed that the competitors knew of the existence of the Trade mark “XEROX” and had their businesses been hampered by the continuing use/existence of the Trade mark “XEROX” in the Register, they would have protested or taken action.

The IPAB, therefore, held that “…But we find the long continuous existence on the Register and the public acceptance of the Trade mark rights when pointed out are factors which weigh with us in our exercise of discretion.”

Thus, the judicial trend, while dealing with the provisions of rectification under Section 57, has always been to keep all facts of each case under due consideration while deciding the matter.

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Contact the Author?
Click here to email the Author
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Other India Advice Centers
Arbitration, Litigation and Conciliation
More Advice Centers
Significant Recent Cases
The latest IP news courtesy of S.S. Rana & Co.
Useful Resources
Useful IP Articles and Publications courtesy of S.S. Rana & Co.
Useful links related to patents and industrial IP rights, government resources, and association resources.
Useful links related to patents and industrial IP rights, global and regional IP offices and organisations.
Upcoming Events
A calendar of past and future events by S.S. Rana & Co.
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions