Topic 41 — Rectification and Removal of Trademarks

The Trade Marks Register is not static. Sections 47 and 57 of the Trade Marks Act 1999 provide two mechanisms by which the Register can be cleaned up — Section 47 removal for non-use, and Section 57 rectification for original or subsequent invalidity. Together, these provisions ensure that the Register reflects current commercial reality and that trademark monopolies are not used to block legitimate competition. This topic walks through both mechanisms in detail, the procedural requirements, the leading cases, and the post-2021 institutional landscape after the abolition of the IPAB.

1. The Architecture of Cleaning the Register

NON-USE

5 yrs 3 months

RECTIFICATION

invalidity

✅ Section 47 vs Section 57

Section 47 attacks a registration based on subsequent non-use — the mark may have been validly registered, but has not been used since. Section 57 attacks the registration on grounds that go to its original validity — the mark should never have been registered in the first place. The two are complementary: Section 47 deals with what happened after registration; Section 57 with what should have happened before. Practitioners often plead both as alternative grounds.

2. Section 47 — Removal for Non-Use

A. Master Provision

Section 47(1)

"A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the High Court by any person aggrieved on the ground either — (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or (b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being."

B. Two Distinct Grounds

Sub-clause	Ground	Test
Section 47(1)(a)	No bona fide intention to use at registration AND no actual use	Defendant must prove BOTH absent intention AND non-use up to 3 months before application.
Section 47(1)(b)	Continuous 5-year non-use	Defendant must prove a continuous 5-year period of non-use ending 3 months before the application.

C. Critical Time Periods

The timing is crucial:

The relevant period ends 3 months before the date of the application — not at the date of filing the application itself.
Use during the 3-month "buffer" before the application is also irrelevant for Section 47(1)(b) — only continuous non-use ending 3 months before counts.
Total minimum non-use period for Section 47(1)(b): 5 years and 3 months.

✅ Why the 3-month buffer?

The buffer prevents proprietors from putting in token use immediately upon receiving notice of a non-use challenge. Without the buffer, a proprietor warned of impending Section 47 application could simply make a single token sale and defeat the application. The 3-month buffer ensures that any use after notice does not save the registration.

D. Bona Fide Use

The use must be "bona fide" — genuine. Indian courts (following Ansul BV v. Ajax Brandbeveiliging, ECJ 2003) require:

Public use — visible to consumers in the market.
Substantial use — sufficient volume of trade.
Brand-identifying use — used as a trademark, not merely incidentally.
In the registered class and territory — use in different classes does not count.
Use to maintain or create market share — not merely to defeat removal.

✅ Token use does not save a mark

A common litigation pattern: when notified of an impending non-use challenge, the proprietor produces records of a single sale or limited promotional use within the 5-year window. Indian courts have generally held this insufficient. Token use, sham use, or use intended only to defeat removal does not satisfy the bona fide standard. The use must be such as a genuine trademark proprietor would make in the ordinary course of business.

E. Section 47(3) — Special Circumstances Defence

Section 47(3)

"An applicant shall not be entitled to rely on for the purpose of clause (b) of sub-section (1) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates."

The proprietor can defend against Section 47(1)(b) by showing "special circumstances in the trade" preventing use. Examples:

Regulatory delays — pending drug approvals, licensing requirements, environmental clearances.
Force majeure — pandemics, natural disasters, civil unrest, political instability.
Import-export restrictions — government bans on the relevant goods.
Litigation pendency — extended court proceedings preventing market entry.
Industry-wide disruption — collapse of the relevant market segment.

F. Standing — "Person Aggrieved"

A Section 47 application can be filed by any "person aggrieved". Indian courts have given this an expansive reading:

A defendant in an infringement suit who wishes to clear the field.
A trader whose own application is being blocked by the impugned mark.
A licensee whose business is hampered by an inactive blocking registration.
A consumer or trade body with genuine interest in market clarity.
Mere busybody complainants without commercial interest do not qualify.

3. Section 57 — Rectification of the Register

A. Master Provision

Section 57(1) — Cancellation or Variation

"On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the High Court or the Registrar, as the case may be, 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."

Section 57(2) — Rectification

"Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit."

B. Grounds for Rectification

Section 57 covers a wide spectrum of registration defects. The most common grounds:

Section 9 absolute grounds — the mark was descriptive, non-distinctive, deceptive, scandalous, hit the Emblems Act, or was a functional shape.
Section 11 relative grounds — confusion with prior third-party rights at the time of registration that should have led to refusal.
Bad faith — the registration was procured by fraud, misrepresentation, or with knowledge of prior third-party rights.
Subsequent loss of distinctiveness — genericide.
Procedural defects — improper publication, failure to comply with formal requirements.
Mismatch between the registration and the actual mark in use.

C. Forum

Section 57 applications can be made to:

The Registrar of Trade Marks — usually for procedural errors or where the parties consent.
The High Court (IP Division) — for contested rectifications, particularly where rectification is initiated as a counter-attack in pending infringement proceedings.

✅ Choosing the forum

Pre-2021, all rectifications went to the IPAB. After the Tribunals Reforms Act 2021 abolished the IPAB, rectification jurisdiction is split between the Registrar and the High Court. As a rule, rectifications against pending infringement suits go to the High Court (consolidating both proceedings); rectifications without parallel infringement go to the Registrar. The Delhi HC IP Division (since July 2022) is the most active forum for trademark rectifications.

D. Patel Field Marshal Decision — Procedural Linkage

📖 Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112

Facts — Long-running rectification dispute over the FIELD MARSHAL trademark. P.M. Diesels held registration; Patel Field Marshal Agencies claimed prior use and challenged the registration through Section 46/47/56 of the 1958 Act (corresponding to Section 47/57 of the 1999 Act).

Holding — Supreme Court (Justice Ranjan Gogoi) clarified the procedural relationship between civil suit and rectification proceedings. Held that: (i) Civil suit can be stayed pending rectification. (ii) Where a defendant raises validity of plaintiff's registration as a defence, the proper procedure is to file a separate rectification application; rectification is the appropriate forum to challenge validity. (iii) The civil court does not have parallel jurisdiction to declare the registration invalid; that is the rectification forum's exclusive function.

Significance — Important procedural authority on the interplay between infringement and rectification proceedings. Establishes that defendants raising registration validity should pursue rectification in parallel.

4. Other Provisions Affecting the Register

A. Section 23 — Registration Subject to Conditions

Section 23 permits the Registrar to register a mark subject to conditions or limitations. Failure to comply with such conditions can lead to cancellation under Section 57(1).

B. Section 25 — Failure to Renew

Section 25(3) provides for removal of a mark if not renewed within the 6-month grace period after expiry. Section 25(4) provides for restoration within 1 year of removal. Beyond that, the mark cannot be revived.

C. Section 60 — Removal of Trade Marks Registered Without Sufficient Cause

Section 60 supplements Section 57 by providing for cancellation of marks "registered without sufficient cause" — overlapping with Section 57(2) but with a slightly different procedural route.

D. Section 41 — Cancellation in Cases of Multiple Geographic Assignments

Section 41 cancellations apply where assignment results in territorially-segregated holders of identical marks for similar goods, leading to confusion.

5. Strategic Use of Section 47 and 57

A. As a Counter-Attack

A defendant in an infringement suit can file Section 47 (non-use) or Section 57 (invalidity) applications as parallel proceedings. If the rectification succeeds, the registration is removed and the underlying infringement claim collapses. This is the strongest defendant counter-attack available in trademark litigation.

B. To Clear the Field

A trader whose own application is blocked by an existing registration can file Section 47 or 57 application to clear the obstacle. Once the blocking registration is removed or rectified, the applicant's mark can proceed to registration.

C. To Challenge Bad-Faith Registrations

Domestic and international brand owners use Section 57 to challenge bad-faith registrations of well-known marks by parasites who file ahead of the actual brand owner. The remedy operates alongside the well-known marks framework (Section 11(6)–(10), Topic 31).

6. Procedural Steps in Section 47 / 57 Proceedings

Application — filed on Form TM-O before the Registrar OR by petition before the High Court IP Division.
Notice — notice issued to the registered proprietor and any other persons interested.
Counter-statement — proprietor files a counter-statement disputing the application.
Evidence — both parties file evidence by way of affidavit.
Hearing — both parties heard.
Decision — Registrar/Court issues reasoned order.
Appeal — appeal lies to the High Court (from Registrar) or Supreme Court via SLP (from High Court).

7. Practical Implications

✅ Twelve practical points for Section 47 / 57 practice

For Section 47 non-use, gather evidence of non-use over 5 years 3 months: market research, retail surveys, online presence checks, advertising-budget records.

For Section 57 invalidity, identify the original ground — descriptiveness, prior rights, bad faith, fraud — and pleadings should track that ground.

For defendants in infringement suits, file rectification in parallel — Patel Field Marshal v. P.M. Diesels (2018) confirms the proper procedure.

Establish standing as "person aggrieved" — show real commercial interest, not mere busybody complaint.

For non-use defence, bona fide proprietors should maintain detailed evidence-of-use records: invoices, advertising spend, market surveys, witness affidavits.

Consider Section 47(3) special circumstances defence for genuine non-use due to regulatory or force majeure delays.

For procedural defects (e.g., improper publication), Section 57 allows simpler rectification through the Registrar.

Time the rectification carefully relative to infringement litigation — Patel Field Marshal allows civil suit to be stayed.

For bad-faith registrations of well-known marks, Section 57 is the primary remedy; combine with Section 11(2) dilution arguments.

For genericide-based rectification, gather evidence of widespread generic use of the mark in industry, media and consumer contexts.

After successful rectification, the registration is removed effective from the date of removal — not retrospectively.

After unsuccessful rectification, the registration stands; the same grounds cannot be re-litigated except through appeal.

🎯 EXAM POINTERS — TOPIC 41

Section 47 — non-use removal; Section 57 — rectification for invalidity.
Section 47(1)(a) — no bona fide intention + no actual use.
Section 47(1)(b) — continuous 5-year non-use ending 3 months before application.
3-month buffer prevents proprietor from putting in token use after notice.
Bona fide use = genuine, public, substantial, brand-identifying (Ansul v. Ajax ECJ 2003 followed in India).
Section 47(3) — special circumstances defence: regulatory delays, force majeure, import bans.
"Person aggrieved" — expansive reading; commercial interest required, not mere busybody.
Section 57(1) — cancellation/variation for breach of conditions.
Section 57(2) — rectification for invalidity (omission, insufficient cause, wrong entries, errors).
Grounds for rectification — Section 9 absolute grounds; Section 11 relative grounds; bad faith; subsequent genericide; procedural defects.
Patel Field Marshal v. P.M. Diesels (SC 2018) — procedural relationship between civil suit and rectification.
Forum — Registrar (procedural) or High Court (contested); IPAB abolished 2021; Delhi HC IPD active.
Strategic uses — counter-attack in infringement; clearing the field; challenging bad-faith registrations.