TRADEMARK APPLICATION TM-M v. TM-P

INTRODUCTION

Trademark registration in India is a necessary stage in the development and protection of a brand. The request for TM registrations is sometimes prone to errors and inaccuracies. There are provisions established under the Trade Marks Act to amend details supplied in application as a remedy for rectification of error or omission. Modification of a trademark is allowed both before and after registration.

There were 75 distinct types of forms for the multiple processes connected to trademark filings and registration under the previous provisions of legislation thus established by the Trademark Rules, 2002. However, the Ministry of Commerce and Industry adopted the Trademark (Revision) Rules, 2017 in accordance with the proposed amendment. The number of forms in the new set of regulations has been reduced to eight in order to clarify and streamline the entire trademark registration and prosecution procedure. These form are available online and are simple to use even for a layperson who has no idea how to file for trademark protection. As a result, understanding the function of each form is critical.

TM- M ('Application/Request for Any Miscellaneous Function in Relation to a Trade Mark Application/Opposition/Rectification Under the Trade Marks Act')

This form is submitted when a claimant desires to make a request for any miscellaneous trademark purpose, such as to modify the trademark application, seek reasons of judgement, or try to obtain Registrar initial guidance, or application for deposition of legislation of collective brand name, or modification of legislation of certified brand name, or demand for Certified copy, or copy Certificate Of registration, or extension of time, or request for review of decision, or any other issues not addressed in other TM forms.

TM- P ('Application for Post-Registration Trademark Changes')

When the applicant has to make the following demands, he or she must fill out this form.

1.  to take the place of the future proprietor as the registered proprietor on the register,

2. to change the information of registered proprietors or registered members,

3. for the modification of registered trademarks,

4. for changes to the specifications of products or services,

5.  for the purpose of converting products, or

6. for the termination of a trademark association.

The foregoing requests are made in accordance with Sections 16 (5), 40(2), 41, 42, 43, 45, 58, 59, 60 of the Trade Marks Act, 1999, and Rules 75, 80, 83, and 85 of the Trademark Rules, 2017. Part A (Applicant's Details), Part B (Purpose of Request), and Part C comprise Form TM-P. (details of the individual making request and list of the documents attached with the said request application).

CHANGES TO PRE-REGISTRATION

An applicant can submit a request for rectification or amendment of the application of trademark before it is registered by submitting trademark Form TM-M together with the specified fee and accompanying documentation. This is often done to repair a clerical error or to make a small technical change as a result of an error in filing and entering data. However, no major change or update to the application may be approved that would significantly modify the proprietor's information, identification of goods and services, or use of the mark.

Owners frequently inquire whether they may alter the word mark, logo, or color specifications in the logo. These alterations, however, come under the category of significant adjustments and are hence not permitted. The approved alterations are more likely to be a clerical error. For instance, a word mark "LegalWiz.in" is entered incorrectly as "LegalWiiz.in" (with an additional I indicating a data input mistake on the side of the applicant. Such modifications are permitted, but we cannot request the inclusion of a symbol or its layout in the very same application. A new application is submitted for this purpose.

The Registry decides whether the requested modification is significant or not after reviewing the application, facts, and supporting papers, if any. We provide a broad list of permissible and prohibited modifications here.

The adjustments would be permissible under the Trade Marks Act if: 

• the amendment does not change the use;

• The date of use is not changed;

• The details of products and services shall not change as a result of the revision.

MODIFICATIONS THAT ARE PERMITTED:

 These modifications do not impact the essence of the application. Changes such as a change in the applicant's or the service provider's address, the deletion or limitation of any item in the specification of goods/services, the limitation/limitation of sales of goods/services, and the division of a multiclass application are authorized. In the event of a modification as a result of a data entry error, the trademark officer can make a change in the system after verifying the appropriate document, along with observations to that effect. The registrar may also order revisions to applications filed after they have been reviewed.

NON-AUTHORIZED CHANGES: 

Changes such as the following will affect the substantial character of the application and so are not permitted.

• Changes to the word mark, logo, and colour specifications

• Changes to the claimed User Date

• Change of trademark kind - for example, a word mark application cannot be changed to a device or label application (As discussed with example above.)

• Change in trademark class

• Modifications in the trade description of a mark - In a few cases, the registrar may direct the changes, but whether or not the modifications sought by the applicant are adopted is at the decision of the registry.

These are only a few instances of situations in which alterations are not authorized. In this case, the applicant may resubmit a registration application.

The following parties can initiate pre-registration changes: 

If the applicant desires to clarify or correct an error made when filing the application, he or she may do so.

The registration includes the following items: If any errors or omissions are discovered, the registry may reject the application for revision. Such applications are marked as 'Formalities Check Fail' by the authorities. The Registrar sends the application back to the applicant, along with the grounds why it was denied for another step of Trademark registration. The applicant has the option of revising and resubmitting the Trademark application to the Registrar.

MODIFICATIONS MADE AFTER REGISTRATION

Once a trademark is registered, a distinct clause controls the modification of registered trademarks. The registered proprietor must file TM-P together with the updated / amended trademark, which must illustrate how the trademark will appear after the changes.

If specific adjustments are necessary after the trademark has been registered, the repairs can be started by:

The applicant: in cases when he or she wishes to fix mistakes or particular details by modification. For example, a change in business location, a change in the name of the corporation under which the mark is registered, and so on. This is also permissible and at the registrar's discretion.

PROCEDURE FOR CHANGING A TRADEMARK

The applicant can file a modification application in the appropriate form, such as TM-M or TM-P, together with supporting papers. The application can be submitted online or in person by paying the necessary cost. Once submitted, the application will be reviewed by the registry. The officer-in-charge may request any explanation or supporting documentation to confirm the application's authenticity.

CONCLUSION

Modification imposes an extra burden on both the applicant and the registrar. It also adds an extra administrative period for the registration, thereby delaying the trademark registration procedure. As a result, the TM registration application must be submitted with the utmost care to avoid filing mistakes.
 

To avoid the modification, cancellation, or deletion of a registered trade mark from the register, necessary steps must be taken during its filing and renewal, as well as measures to protect the distinctive personality of the mark and not abandoning the mark.

Written by: Kaushiki Keshari