Errors and Amendments –Indian Trade Marks Act

The question that is discussed in this article is if there is a typographical and / or a clerical error in a notice of opposition or a counter statement filed with Trade Marks Registry, then can such a typographical and / or a clerical error result in the notice of opposition or counter statement being dismissed. Briefly is also discussed the effect of amendment in a notice of opposition or a counter statement.

To understand the proposition it is important the relevant section of Indian Trade Marks Registry be read and interpretation be drawn from the same.

Section 21 (7) of the Trade Marks Act, the relevant section, reads- “The Registrar, may on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter statement on such terms as he thinks just”.

Thus Section 21 (7) of the Act is wide enough to encompass even amendments to the notice of opposition and counters statements leave alone errors.

“Errors” are of lower degree as compared to “amendments”. Errors envisage minor typographical and clerical mistakes and when these corrections are carried out, the same do not in any manner effect the right of the opponent or the applicant by decreasing or increasing the rights.

A typographical / clerical error cannot be taken as a basis for the notice of opposition or a counter statement as void. It is emphasized here that what has to be seen is if the opposition / counter statement is in pith and substance against the concerned application, then a mere typographical or clerical error cannot become a basis for rejection of the notice of opposition.

Thus the Learned Registrar of Trade Marks has ample powers to allow amendments of the notice of opposition including the introduction of new ground.

In this regard an interesting case is the case of Aminchand & Sons vs. Sohan Lal Bassan & Bros FAO No. 84 of 1970. Briefly the opponents at the stage of filing evidence in support of the opposition sought leave to amend the notice of opposition by introducing new ground of opposition. The Assistance Registrar refused permission to amend the notice of opposition on the ground that the Act contemplated only amendments in the nature of clerical error or some mistake on the face of record or an amendment to bring on record a subsequent change in the proprietorship of the trademark and not an amendment to introduce a new or fresh ground of objection.

The opponents appealed to the High Court at Delhi. High Court held allowing the appeal that –

(a) Registrar had ample powers to allow amendment of notice of opposition including introduction of new ground of opposition;
(b) That said power was not confined to correction of an error or an occurrence of any subsequent event;
(c) That the said powers were wide and must be construed liberally; and
(d) That the registrar had nevertheless a discretion to allow or not allow an amendment

Therefore the law is well settled in this quarter as regards the correction of typographical / clerical errors in the notice of opposition.

The catch lies in the fact that after all the discussions and debates the Court has left the discretion of Registrar to allow the amendment. Therefore all that can be said at the moment is that depending upon the facts and circumstance, the amendment of the notice of opposition may be allowed. So for instance if a new ground - which is not the change of name of the applicant or the opponent- is of such a material nature, like a ground which would never have arisen till happening of some events, then the same may be allowed.