NO AMENDMENT IN “USER DATE” OF A TRADE MARK APPLICATION

The Controller General of Patents, Designs and Trade Marks, (India) issued a circular dated June 8, 2012 by virtue of which no request for amendment of a trade mark application shall be allowed which seeks substantial alteration in an application for registration of trademark. Such alteration/amendment includes substantial amendment in the trade mark, proprietor details, specification of goods/services (except deletion of some of the existing items), statement as to the use of mark shall not be permitted. The circular also mentions that request for amendment in the proprietorship of a trade mark on the basis of valid assignment or transmission; amendment in address of an applicant or in the applicant's address for service; deletion or confinement of any item in the specification of goods/services, confinement/limitation in the area of sale of goods/rendering of services may be allowed.

In this regard, attention is drawn to the proviso of Rule 41 of the Indian Trade Marks Rules, 2002. Such proviso provides that “no such amendment shall be permitted which shall have the effect of substantially altering the trade mark applied for or substitute a new specification of goods or services not included in the application as filed”. It is clear that the proviso does not indicate any prohibition for amending the “user date” of a mark in a pending application.  Until the issue of the circular, it has been a common affair to allow amendment in the user date of an application by the Trade Marks Registrar. Such amendment includes amending the user date of an application from “proposed to be used” to a “particular user date” or vice versa. It was also common to amend the existing date of “use” of a mark in a pending application.

In view of the Controller General’s circular, an applicant has to be particularly careful with respect to the user date of a trade mark while filing an application, since no amendment with respect to the user date shall now be allowed.