How to Rectify a Registered Trade Mark?

Rectification is the process which allows someone to rectify an error made in the details of a registered trade mark. As per Section 64 of the Trade Marks Act (TMA) 1994, the person applying to rectify must have ‘sufficient interest’ in the mark and/or right. This may have to be established when the applicant has no obvious interest.

Section 64 TMA 1994

Any person that has a sufficient interest can apply for the rectification of an error, so long as the rectification is not made of a matter affecting the validity of the registration of a trade mark.

‘Validity’

The interpretation of validity is broad.

Section 64 cannot be used for example to:

• Alter the identity of the mark itself
• Increase the breadth of the specification
• Request that another person be substituted as the owner of the trade mark because they have an earlier right to the trade mark and/or it is alleged that the application was made in ‘bad faith’

Examples of what it can be used for are:

• Terms used in the specification which are self-evidently erroneous and no other party could possibly be disadvantaged by their correction.
• Applicant’s or proprietor’s name and/or address, which appears on the register incorrectly and, on the basis of evidence provided, is incorrect.
• Cases of genuine mistaken identity where the person filing the original forms was unaware of the correct ownership position in law.

Section 60(3)(b) TMA 1994

This specific provision is made for an application for rectification to be made where an agent or representative has ‘taken’ a mark belonging to a person who is the proprietor of the mark in a convention country. That is a country other than the UK.

Application for rectification

An application to rectify an error is made on a TM26R. A statement of grounds on which the application is made and any supporting evidence is also required. An applicant must give details of why the rectification is wanted and how the error occurred. If an application lacks a statement or evidence or if the grounds are unclear, the Tribunal may write to the applicant asking for the needed documents and clarification.

There is a list of information that should be included in an application:

• What trade mark you want to rectify
• Who owns it
• Who are you
• Who is your representative (if you have one)

and

• What is the error or omission you want to correct

This is all in accordance with Rule 44 of the Trade Mark Rules (TMR) 2008.

Notice and counter statement where the applicant is not the proprietor

If the application is not made by the proprietor (registered owner of the trade mark), the Tribunal will send a copy of the application and evidence to the proprietor. This takes place under Rule 44 of the TMR. Under this rule, the proprietor is likely to be given a period of time to file a counter statement and would give both sides an opportunity to file evidence supporting their claims.

Evidence

This question of evidence is governed by Rule 44 of the TMR 2008. It holds that it is under the discretion of the Tribunal to specify the periods for the filing of evidence and submissions by the parties. Certain circumstances may be deemed appropriate to set concurrent rather than sequential evidence rounds.

Conclusion

Rectification allows parties to correct errors in the register of trade marks without affecting the validity of the registration. It protects registered proprietor’s rights by ensuring that the person applying to rectify has ‘sufficient interest’ in the mark and/or right. ‘Sufficient interest’ also protects third party rights because a business or individual whose rights are impacted by an error in the register are also able to bring a rectification application.