This article is written by Vidushi Kachroo with an aim to provide a detailed explanation about the alteration of a registered trade mark given under Section 59 of the Trade Marks Act, 1999. The article provides a detailed explanation of the provisions of Section 59 of the Act and also explains the rules given under the Trade Marks Rules, 2017.

This article has been published by Shashwat Kaushik.

Introduction

When we think about the term ‘trademark’, we come to a general definition that it is a symbol, name or a logo that helps us identify a brand. In legal terms, ‘trademark’ refers to a mark which can be used by the customers to differentiate between two entities. It means a mark which distinguishes the goods and services of one person from those of another. This definition is given under Section 2(1)(zb) of the Trademarks Act, 1999 (hereinafter referred to as the Act). 

This Section also provides that a trademark is a mark which can be shown or represented graphically. A trade mark may be anything like the shape of goods, their packaging, logo, numerics, symbol or a combination of colours, etc. the goodwill of the owners of the goods and services is attached with their trademark. It also represents the quality of the goods or services offered by the owners. 

The Trade Marks Act, 1999, is the law prevailing in India for the protection of trademarks. There are certain circumstances where an unregistered trade mark may also be given protection under the Act, but only a registered trademark is allowed to be altered. A registered trade mark is defined under Section 2(1)(w) of the Act as a trade mark that is actually present on the register and remains in force. The Act does not restrict any registered user from altering his trademark. However, there are certain conditions which make the proposed alteration invalid.

Alteration of a trade mark may include  modifying or changing the logo, name, design, or any such other aspect of the trade mark. Such alteration must not affect its core identity. Alteration  does not mean changing the substantial identity of the trade mark. The alterations may be made as a result of rebranding strategy, market updates, legal requirements, etc. The registered user can file an application for alteration of the trade mark, but such an application may be accepted or even rejected by the registrar depending upon the nature and extent of the alterations requested. The Act has laid down the changes that are not permitted to be made to any trade mark. 

Since we have understood the basic meaning of trade mark and its alteration, let’s understand the whole process of trade mark alteration in depth.

Alteration of a registered trade mark (Section 59 of the Trademarks Act, 1999)

Section 59 of the Act specifically lays down the procedure and conditions of altering a registered trademark. Section 2(1)(w) of the Act defines a registered trademark. A registered trademark simply means a trademark that has been registered under the Trade Marks Act, 1999, and is in force. A trade mark is registered in the Register of Trademarks by the Registrar of Trademarks. A registered trade mark may be altered, if necessary, as per Section 59 of the Act and the Trademark Rules, 2017.

A trade mark cannot be altered in such a way that the brand’s identity changes completely. Only certain changes can be made that do not affect the central identity of the trademark. For example, the well known trademark in India, Amul has made alterations in its logo over the years like minor changes in typography, adjustments for clarity and scalability, etc. but the main theme of the logo in red color over a white background remains consistent. This is because the red and white theme has become the core identity of the brand and hence, it will not be allowed under Section 59 of the Act, to be altered.

Generally, changes in the name of the owner, font, or  design of the registered trademark are permitted. This is because such changes do not change the trade mark entirely.

The alteration can be made after undergoing the opposition proceedings if the application for alteration of trademark is opposed by any person. Finally, once the opposition proceedings are closed, the Registrar of Trademarks may grant the leave for alteration as he thinks fit. 

To have a better understanding of this concept, let’s go through the detailed explanation of Section 59.

Section 59(1) of Trade Marks Act

This subsection states that an application may be made by the registered owner of a trademark for adding or altering such registered trademark. The application is to be filed to the Registrar of Trademarks.The application will be filed in the manner as prescribed by the law, i.e., as per the provisions of the Trade Marks Rules, 2017.

However, the only important thing to note is that the addition or alteration should not affect or change the identity of the trade mark entirely. In simple terms, a trade mark cannot be altered completely. Its basic identity has to be retained. The Registrar has the authority to grant the leave for alteration of trade mark or refuse such leave. He may grant the leave on any such terms and subject to such limitations as he deems fit.

Section 59(2) of Trade Marks Act

This subsection lays down the procedure to be followed by the Registrar. Any application made under this section may be advertised in the prescribed manner if the Registrar thinks that it is necessary or expedient to do so. If the application is advertised and a notice opposing the alteration of such trade mark is submitted by any person to the Registrar, then in such a case, the matter shall be decided by the Registrar after hearing both parties, if required. 

The notice of opposition shall be filed in the prescribed manner and within the prescribed period of time from the date on which the application for alteration of trade mark was advertised. 

Section 59(3) of Trade Marks Act

This subsection provides that where the Registrar grants the leave for alteration of trademark under this section, then the altered trade mark shall be advertised as per the prescribed manner. However, if the application has already been advertised by the Registrar under subsection (2), then in such a case, it is not necessary to advertise the altered trade mark.

Procedure of alteration of a registered trade mark

Section 59 of the Act lays down the conditions and authority of the Registrar in case an application for alteration of a trade mark has been filed by the registered proprietor in the prescribed manner. This prescribed manner, as mentioned in this section, refers to the rules and procedures laid down that are to be followed for the alteration of a trade mark. The procedure for alteration of trade mark has been given in the Trademark Rules, 2017 from Rule 102 to Rule 104 along with Rules 45 to 51. These rules have to be followed while applying the leave for alteration.

Let’s go through the steps which have to be followed for getting a registered trade mark altered.

Filing of application form

• Rule 102: It states that the registered proprietor of the trade mark shall file an application in writing in Form TM-P for requesting leave to add to or alter such registered trademark. The proprietor shall also furnish copies of how the trade mark will appear after adding to or altering it.

 A copy of the application and copies of the trade mark so altered or amended shall also be served by the applicant to every registered user, if there is any. A registered user is the person who has been authorised by the registered proprietor to use the registered trademark. 

The application for alteration may be filed either online or by physically visiting the Trademark Registry Office. The filing of an application also requires payment of a fixed amount as fees. It is also necessary to attach necessary documents if the alteration is regarding the address or name of the proprietor.

• Rule 103(3): If there is no opposition, within the time specified in sub-rule (2), the Registrar shall, after hearing the applicant if he so desires, refuse the application and shall communicate his decision in writing to the applicant.

Evidence

Rules 45-51 lay down the procedure for production of evidence by the opponent and the applicant in support of their applications. 

• Rule 45: This Rule lays down the procedure to be followed by the opponent to submit evidence, if any, to support his opposition. 

Rule 45(1) lays down that the opponent is given a 2 month time period from the date of receipt of the copy of the counter statement, within which he shall either submit to the Registrar any evidence which he may desire to adduce in support of his opposition notice.

In case of no evidence, he shall intimate the Registrar and the applicant, in writing, that he does not wish to adduce any evidence; rather, he intends to rely on the facts as stated in the notice of opposition.

The evidence shall be submitted in the form of an affidavit, and the opponent shall serve copies of such evidence as submitted by him to the Registrar, including exhibits, to the applicant and shall also intimate the Registrar of such delivery in writing.

Rule 45(2) further states that if the opponent does not take any action within the stipulated time period mentioned under sub-rule (1), then in such a case, his notice of opposition shall be deemed to have been abandoned. 

• Rule 46: This rule lays down the procedure to be followed for submission of evidence by the applicant in support of his counter statement. Rule 46(1) states that the applicant is also given 2 months, within which he shall submit or leave with the Registrar the evidence in the form of affidavits, which he intends to adduce in support of his counter statement. 

If he does not desire to produce any evidence, then in such a case, he shall intimate the Registrar and the opponent that he does not wish to produce any evidence and would like to rely on the facts written in the counter statement. 

The time period of 2 months shall start from the date on which he received the copies of the affidavits as served by the opponent.

If the applicant wants to rely on the evidence that he already had left in connection with the application in question, then he shall intimate this to the Registrar and the opponent.

If the applicant submits any evidence or relies on any evidence as left by him previously in connection to his application, then he shall serve the copies of such affidavits, including exhibits, to the opponent and notify the Registrar, in writing, of such delivery. 

Rule 46(2) lays down that if the applicant does not take any action within the time period mentioned under sub-rule (1), then he shall be deemed to have abandoned his application.

• Rule 47: The opponent, within 1 month from receiving the copies of the affidavits as submitted by the applicant, may leave with the Registrar any further evidence, in the form of an affidavit, as a reply to the applicant. If any evidence is given by the opponent as a reply to the applicant, he shall serve the copies of such evidence to the applicant and notify the Registrar, in writing, of such delivery. 
• Rule 48: This rule states that the Registrar shall not accept any evidence from any of the parties after the allotted time. However, the Registrar may allow any of the parties to submit evidence at any stage of the proceeding. Such submission may be subject to any terms or costs as he thinks fit.
• Rule 49: As per this Rule, if any document referred to in any stage of the proceeding is in a language other than Hindi or English, then, such document shall be translated either in Hindi or English. Also, an attested copy of the translation shall be submitted to the Registrar and a copy of such translated document shall be served to the opposite party.

Hearing and decision

• Rule 50: After the submission of all the evidence, the evidence stage is closed, and the Registrar shall give notice to the parties of the first date of hearing. The first date of hearing shall be scheduled after 1 month from the date on which this notice was served, giving the parties sufficient time to prepare.

A party to a proceeding may make a request to the Registrar for adjournment of the hearing. Such request shall be made in the Form TM-M, accompanied by a reasonable cause and the prescribed fee. The request shall be made at least 3 days prior to the date of hearing.

The Registrar has the discretion to either grant such adjournment or refuse to grant it. If the Registrar grants the adjournment, he may set out such terms as he thinks fit and notify the parties of the new date of hearing.

It is important that a party shall be allowed a maximum of 2 adjournments, and each adjournment shall be for a period of 30 days and not more than that.

If the applicant does not appear on the adjourned date and time of hearing, as mentioned in the notice, his application may be treated as abandoned.

If the opponent is not present on the adjourned date and time of hearing, then  the opposition may be dismissed due to failure of the party to actively pursue the case. As a result, the application may proceed to registration subject to Section 19 of the Act.

The decision of the Registrar shall be communicated to the parties in written form, and it shall be delivered at the address that they provided for service.

• Rule 51: This rule states that the Registrar may ask any party to provide a security deposit as per Section 21(6) of the Act. The Registrar may set the amount to be deposited and has the discretion to increase it at any point of proceeding if he deems it necessary. 

Registration of the altered trade mark

Rule 104: This rule states that if the Registrar decides to allow the application, he shall alter the trade mark in the register accordingly and publish a notification in the journal stating that the trademark has been altered along with the altered trade mark.

Implication of the altered trade mark

Now let’s suppose that the trade mark has been altered. But one question lingers in our minds – What happens to the old trade mark?

Once the altered trade mark has been entered in the register by the Registrar and the same has been published in the journal notifying the public of the alteration, the new altered trade mark shall replace the old trade mark. This means that the altered trade mark shall be the officially registered trade mark for all the goods and services.

The registered proprietor shall also be issued a new certificate of registration, serving as a proof that the new altered trade mark has been officially registered.

The new, altered trade mark will be given the same legal protection as the old one. The registered proprietor will be entitled to enforce his rights associated with the altered trade mark, including preventing unauthorised use of the new trade mark by others. In the case of prior agreements related to licensing or registered users, the agreements will be updated with the new altered trade mark.

The old trade mark will lose its validity when the altered trade mark will be registered. This means that the owner cannot use the old trade mark in any of his business activities. The use of old trade marks will be discontinued. 

Alterations that are not permitted

According to Section 59 of the Act, the trade mark may be altered, but in a manner that does change the trade mark entirely. This means that the trade mark, once registered, cannot be changed entirely so that its whole identity gets compromised. For instance, the trademark of Starbucks is based on the color theme of green and white. Hence, the theme of green and white can not be changed because it has become the identity of the trademark. Only minor changes related to the font of typography can be allowed.

So, as per the interpretation of this Section, the permissible changes may be of a minor nature and should not affect the registered trademark or its basic identity. Some of such types of changes may be:

• Change in the name of the registered proprietor;
• Change in the address of the registered proprietor;
• Minor changes in the font or word placement that do not change the original meaning or appearance; 
• Any typographical errors.

Apart from these, there are certain alterations that are not permitted. These alterations can be inferred from various sections of the Act as well as the Trademark Rules, 2017. However, Section 59 shall remain the guiding principle for interpreting as to what changes may be permitted and what may not. Some of these alterations are as follows:

• Any alterations that affect the core identity of the trade mark significantly are not allowed to be made. This can include major changes to the logo, words, or any design element that makes the trade mark distinctive. The main idea or message of the trade mark and the symbols or characters that were key for identifying the trade mark cannot be altered in any case.
• Any alteration that intends to use any signature to symbolise the company’s name in the trade mark is not allowed.
• Any alteration seeking to add or remove the list of goods and services registered under the trade mark is not permitted. If a new list of goods and services has to be added, a new application is required to be filed for expansion.
• The class in which the trade mark was originally registered can be altered. The application for registration of a trade mark is filed under the class within which the goods or services fall. This class cannot be altered.
• Any alteration regarding the ownership of the trade mark that misleads the general public is not allowed. For example, if the ownership of the business has been transferred to someone else but the trade mark used still uses the name of the previous owner. This can lead to confusion among the public. Hence, the alterations regarding such a matter should be done without causing any deception. 
• A trade mark cannot be altered if the proposed changes are deceptive in nature or are similar to an existing registered trademark. 

Conclusion

The Trade Marks Act, 1999, provides the registered proprietor of a trade mark the right to alter such a trademark at any point in time but subject to certain limitations. Section 59 of the Act allows the owner to alter the trade mark in such a way that the core identity of the trade mark is not affected. This means that although one can add to or alter the trade mark registered in his name, but can not change the whole identity of the trade mark.

The trade mark can be altered with minor changes that do not create any type of confusion in the minds of the consumers or change the main idea conveyed by it. 

For instance, the logo of a trade mark cannot be changed entirely, as it will eventually lead to confusion among the general public who are accustomed to identifying a certain business by that particular trade mark. 

Changing a trade mark wholly would mean changing the entire identity of the business or brand associated with such a mark. Hence, along with permitting alteration of a registered trade mark, Section 59 also puts restrictions on how and to what extent the alterations can be made. 

Section 59 lays down the provisions as to how the trade mark can be altered, but the detailed procedure and manner regarding the same have been laid down under Rules 102 to 104 along with Rules 45 to 51 of the Trade Marks Rules, 2017. These rules give detailed information as to which Form has to be applied, how the evidence is submitted, and how the proceedings take place in case of opposition. 

Once a trade mark is altered and officially registered by the Registrar, it replaces the old trade mark. The altered trade mark is given the same legal protection given to the old one against any type of infringement, and its registered proprietor is entitled to exclusive rights over it.

Frequently Asked Questions (FAQs)

Which form is used for registration of a trade mark?

The application for registration of a trade mark is filed in Form TM-A. It can be filed either online by using the e-filing section of the official website for trademarks, or it can alternatively be filed manually at any one of the five Trademark Registrar Offices in India.

Can a registered user assign or transmit a registered trademark?

No, the Trade Marks Act, 1999, lays down under Section 54 that no provision of this Act confers upon a registered user the right of assignment or transmission of a registered trade mark. A registered user is the one who is allowed by the owner of a trade mark to use it.

Under which section can a person be penalised for falsely representing a trade mark as registered?

Falsely representing a trade mark can lead to a penalty of imprisonment for a term that may extend to 3 years, or with a fine or with both as given under Section 107 of the Trade Marks Act, 1999.

References

• https://www.indiafilings.com/learn/alteration-registered-trade mark/
• https://www.intepat.com/blog/alterations-to-a-registered-trade mark/