Trademark Rectification Under Section 57: Removing a Wrongly-Registered Mark in India

Section 57 of the Trade Marks Act, 1999 is the statutory route for correcting the Trade Marks Register. Any person aggrieved by the entry of a mark — whether obtained through misrepresentation, registered in violation of the Act, or remaining on the Register without sufficient cause — can apply to the Registrar or the High Court to remove or amend it. Rectification under Section 57 is the principal post-grant tool against a wrongful registration; it complements pre-grant opposition under Section 21 and the non-use cancellation route under Section 47.

This guide explains the grounds for rectification, the forum choice, the procedure, the standing requirements, and the strategic reasons for choosing rectification over an infringement defence or a passing-off action.

The text of Section 57

Section 57(1) allows the Registrar to rectify the Register on application by any aggrieved person. Section 57(2) covers situations where the mark was wrongly remaining on the Register. Section 57(4) gives the Registrar suo motu power to rectify after notice to the parties. Forum: applications can be made to the Registrar of Trade Marks or, if litigation is already pending in a High Court, to that High Court under Section 57(5) read with Section 124 of the Act.

The 2021 abolition of the Intellectual Property Appellate Board (IPAB) by the Tribunal Reforms Act consolidated the rectification jurisdiction in High Courts in cases where a Civil Court proceeding is ongoing, and otherwise in the Registrar. Standing is broad: 'any aggrieved person' has been read generously by Indian courts to include trade competitors, prior users, registered proprietors of similar marks, and consumer-protection bodies in appropriate cases.

The Register is not a fortress. Section 57 is the door.

Grounds for rectification

The grounds available under Section 57 mirror most of the grounds under which a mark should not have been registered in the first place. The most-used grounds:

• Contravention of Section 9 — the mark was descriptive, non-distinctive, generic, or otherwise unregistrable when granted
• Contravention of Section 11 — relative grounds; the mark is identical or similar to an earlier mark and creates a likelihood of confusion
• Bad faith — Section 11(10) was added in 2010 and is a frequent ground in rectification matters involving brand-name squatting
• Misrepresentation in the application — false claims of prior use, false claims of intent to use, false statements about the goods or services
• Wrongly remaining on the Register — the mark has become generic, the proprietor has lost rights through assignment defects, or has otherwise become incompatible with continued registration

Rectification vs opposition vs Section 47

Indian trade-mark practice has three principal challenge routes, each suited to a different stage:

• Section 21 opposition — pre-grant, after publication in the Trade Marks Journal, within the 4-month opposition window. The cheapest stage to defeat a mark
• Section 47 non-use cancellation — post-grant, on the ground that the mark has not been used for a continuous period of 5 years and 3 months. Specialised, ground-specific
• Section 57 rectification — post-grant, on broader grounds. The catch-all route for substantive challenges to a registered mark

Section 57 is often filed alongside a Section 47 application when both non-use and substantive-ground arguments are available. It is also typically filed as a counter-claim or parallel action when the rectification applicant is being sued for infringement — Section 124 of the Act suspends an infringement suit pending the outcome of a serious rectification challenge.

The procedure

An application is filed in Form TM-O (for rectification before the Registrar) or as a petition before the High Court, accompanied by a statement of grounds and supporting evidence. The current government fee is ₹3,000 for an e-filing by an individual or startup, ₹9,000 for other entities (verify current Trade Marks Rules, 2017 schedule).

The proprietor of the registered mark is served and given a chance to respond. Both sides file evidence by way of affidavits. A hearing follows. The Registrar (or the High Court) passes an order either rectifying, removing, or refusing the application. Orders are appealable — Registrar orders to the High Court, and High Court orders within the High Court appellate framework.

Evidence in rectification matters

Rectification proceedings are evidence-heavy. The applicant's affidavit typically includes:

• Documentary evidence of the applicant's standing — prior use, prior registration, market presence
• Evidence of the substantive ground — descriptiveness (dictionary entries, industry usage), prior similar marks (Register extracts), bad faith (correspondence, timing of filings)
• Evidence of the impugned proprietor's actual or non-use of the mark, if non-use is also being argued
• Market evidence — sales records, advertising spend, press coverage — to establish reputation or competing reputation

The proprietor's evidence usually mirrors these categories on the defending side. Both sides may cross-examine on affidavits, though in practice most Indian rectification proceedings are decided on the affidavits without oral cross.

The takeaway

Section 57 is the structural counterweight to the first-to-file rule. It ensures that a wrongful registration — whether obtained through bad faith, descriptiveness, prior use of another, or sheer error — does not stand permanently. For Indian businesses facing a blocking registration, an infringement notice based on a weak registration, or a competitor whose mark should never have been granted, rectification is the strongest move on the board. IPForte's trademark opposition and rectification practice handles Section 57 petitions and parallel infringement defences regularly.