In short. If someone has registered a trademark that copies your earlier brand, was taken in bad faith, is descriptive, or has not been used for over five years, you can ask for it to be removed or corrected by a rectification petition. Since 2021 these petitions, once heard by the IPAB, go to the High Court, and in Delhi to its Intellectual Property Division. A petition commonly takes one to three years, faster if the owner does not contest. Start by pulling the register extract and proof of your own earlier use.
Is this your situation?
- A former distributor, franchisee or partner has registered your brand name in his own name.
- You have used your mark for years but someone else got it registered first and is now sending you legal notices.
- A rival's registered mark sits in your way at the Trade Marks Registry and appears unused for many years.
- You sued for infringement and the defendant says your own registration is invalid.
- A common descriptive word in your trade has been registered by one company, which is now threatening others.
- Your registered mark has been challenged by a rectification petition and you need to defend it.
- The register shows wrong details for your mark, such as goods you never applied for or an outdated owner.
What rectification is and when you need it
Rectification is the legal process for taking a trademark off the register, limiting it, or correcting an entry that should not be there. A registration gives its owner the exclusive right to use the mark and to sue others for infringement, so a wrongly registered mark is not a paper problem: it can block your own application, give a rival a weapon against you, and make customers think the rival is the original. Section 57 of the Trade Marks Act 1999 allows any person aggrieved to apply for the entry to be cancelled or varied, and Section 47 allows removal of marks that have not been used.
Before 2021 these applications went to the Intellectual Property Appellate Board. The Tribunals Reforms Act 2021 abolished the IPAB and transferred its work to the High Courts. The Delhi High Court then set up an Intellectual Property Division and framed the Delhi High Court Intellectual Property Rights Division Rules 2022, under which rectification petitions are registered and heard. Pending IPAB matters were transferred to it.
Rectification comes after registration. If the rival mark has only been applied for and advertised in the Trade Marks Journal, the right step is opposition under Section 21 within four months of advertisement, which is cheaper and faster. Once the mark is registered, rectification is the way to remove it.
The sections that decide a rectification case
Section 57: cancelling or varying an entry
On an application by a person aggrieved, the Registrar or the High Court may cancel or vary a registration that was made without sufficient cause, that is wrongly remaining on the register, or where a condition of registration has been breached. The court can also correct errors and omissions in an entry. Under Section 57(4) the Registrar or the High Court may act on its own motion after notice.
Section 47: removal for non-use
A registered mark can be removed for goods or services on which it has not been used. One ground is registration without a bona fide intention to use, followed by no bona fide use up to three months before the application. The more common ground is a continuous period of five years or longer, counted from the date the mark is actually entered on the register, without bona fide use, ending three months before the application. Section 47(3) protects an owner who shows special circumstances in the trade, such as an import ban, which prevented use.
Sections 9, 11 and 18: why a mark should not have been registered
Section 9 bars marks that are descriptive, lack distinctiveness, have become customary in the trade, or are likely to deceive. Section 11 bars marks identical or similar to earlier marks where confusion is likely, protects well known marks, and allows refusal of applications made in bad faith. Section 18 requires the applicant to be the proprietor, which is why a distributor or agent who registers the principal's brand has a weak registration.
Sections 31 and 32: the owner's protection
A registration is prima facie evidence of validity under Section 31. Under Section 32, a mark registered in breach of Section 9(1), for lack of distinctiveness, is not to be declared invalid if it has since acquired distinctiveness through use before the challenge. These sections matter most to the defending owner.
Sections 124 and 125: when the question arises in a suit
If a defendant in an infringement suit pleads that the plaintiff's registration is invalid, or a plaintiff challenges the defendant's registration, Section 124 requires the suit to be stayed while the validity question is decided through rectification. Section 125 says that where such a suit is pending, the rectification application must be made to the High Court, not to the Registrar.
Grounds that usually succeed
The strongest rectification cases rest on prior use. Trademark rights in India come first from use, not registration. If you have been selling under a name since 2012 and someone registered a similar name in 2019 for the same goods, your earlier use and goodwill can defeat the registration, both under Section 11 and as a matter of passing off. The quality of your proof decides the case: dated invoices, advertisements, sales figures and trade directory entries going back to the date you claim.
Bad faith registrations form the second large group. A distributor, licensee, franchisee, employee or business partner who registers the principal's brand behind its back is the classic case, and Section 18 together with the general requirement of honest adoption makes such registrations vulnerable. So does registration of a foreign brand that has a reputation in India before the foreign owner enters the market, where the Indian applicant cannot explain how it came up with an identical name and logo.
Descriptive and generic marks are a third ground. A trader who registers a word that describes the product, its quality or its place of origin, and then threatens everyone else in the market, can be met with a petition showing the word is common to the trade. Non-use under Section 47, discussed next, is the fourth, and often the simplest, because the burden of proving use effectively falls on the owner who claims it.
Removing an unused mark under Section 47
Many registers are cluttered with marks that were registered and then forgotten. When one of them blocks your application, a non-use petition is often the cleanest answer. The five years run from the date the mark is actually entered on the register, which is the date of the registration certificate or of entry, not the earlier application date. The period of non-use must continue up to a date three months before you file. Check these dates carefully: a petition filed a few weeks early can fail on that alone.
Use must be genuine and in the course of trade, not token. A single invoice raised just before the petition, or sales to a related company to keep the mark alive, are treated with suspicion. Use of the mark in a form that differs only in minor details, or use by a licensee with the owner's consent, generally counts. Use on some goods only can lead to the registration being restricted to those goods, while the rest of the specification is removed.
The owner can resist by showing special circumstances under Section 47(3): a regulatory approval that took years, an import restriction, or a court injunction that prevented use. Mere lack of money or a business decision to delay a launch is unlikely to be enough. Before filing, an investigation into whether the mark is in use, in the market and online, saves a great deal of trouble. When Advocate B.K. Singh considers a non-use petition, he first asks for an investigator's report on the owner's market presence, because a petition that runs into evidence of real use is expensive to lose.
Who can file: the person aggrieved
Only a person aggrieved can apply under Sections 47 and 57. The phrase is read broadly but not without limit. A trader whose application has been objected to because of the registered mark, a trader sued or threatened under it, or one who genuinely wishes to use a similar mark in the same trade will usually qualify. A stranger with no business interest in the mark will not.
The Supreme Court considered the phrase in Hardie Trading Ltd v. Addisons Paint and Chemicals Ltd (2003) and in Infosys Technologies Ltd v. Jupiter Infosys Ltd (2011). In the Infosys case, the petitioner failed because it had not shown that it was using or intended to use the mark for the relevant services, so it could not show any real grievance from the registration remaining. The lesson is to set out your interest specifically in the petition: what you sell, under which mark, since when, and how the registration affects you.
Registrar or High Court: choosing the forum
Section 57 allows the application to be made either to the Registrar of Trade Marks or to the High Court. The Registrar route, through a cancellation application at the Trade Marks Registry, is cheaper in court fee and appropriate where there is no litigation and the issue is simple, such as a straightforward non-use case. It can, however, move slowly, and the Registrar's order can then be appealed to the High Court under Section 91, a route covered on our page on appeals against Trade Marks Registry and Patent Office orders.
The High Court route suits contested cases, especially where an infringement suit is pending or likely, where evidence of reputation and bad faith needs careful testing, or where the other side is likely to drag matters out. It is mandatory where Section 125 applies, that is, where an infringement suit is already pending and the validity of a registration is in issue. In Delhi, the IP Division deals with rectification petitions alongside related suits, and the same judge often hears both, which makes for consistent results.
Two cautions. Do not file before both the Registrar and the High Court on the same ground. And do not assume rectification is always the right weapon: if your real aim is to stop a rival trading, an infringement or passing off suit with an interim injunction may protect you faster, with rectification run alongside. Our guide on how to remove a wrongly registered trademark sets out the options in simpler terms.
Which High Court hears it, and the open jurisdiction question
Rectification petitions in the Delhi High Court are filed on its original side, registered under the IPD Rules and listed before the Intellectual Property Division. The safest basis for filing in Delhi is that the mark was registered by the Delhi office of the Trade Marks Registry, which handles applications from Delhi and much of north India, because the Registry office's location has long been treated as decisive for appeals and rectification.
Whether a petition can also be filed in a High Court where the registration has its effect, such as where the petitioner trades and is harmed, is not settled. In Dr. Reddy's Laboratories Ltd v. Fast Cure Pharma (2023), a single judge of the Delhi High Court held that a petition could be filed where the dynamic effect of the registration is felt. In The Hershey Company v. Dilip Kumar Bacha (2024), another single judge took the narrower view, linked to the Registry office, and the question was referred to a larger bench. Until there is an authoritative answer, check the current position before filing, and where possible choose a forum that satisfies both views.
Where a Delhi infringement suit is pending, the rectification petition relating to the marks in that suit is generally heard by the Delhi High Court, since Section 125 points to the High Court and the court has preferred that suit and petition be decided together. This is a practical reason many brand owners consolidate their disputes in Delhi.
Rectification during an infringement suit: Sections 124 and 125
Defendants sued for trademark infringement often reply that the plaintiff's registration is invalid. Section 124 sets out what happens next. If a rectification petition is already pending, the suit is stayed on that question. If none is pending, the court first examines whether the plea of invalidity is prima facie tenable. If it is, the court frames an issue and adjourns the case for three months so that the defendant can file a rectification petition. If the defendant does not file within that time, the plea of invalidity is treated as abandoned.
The Supreme Court explained this scheme in Patel Field Marshal Agencies v. P.M. Diesels Ltd (2018): once the civil court has found the plea tenable, the validity question is decided only in rectification, and a party who lets the time lapse cannot raise it again in the suit. The stay under Section 124 does not prevent the court from granting an interim injunction in the meantime. So a defendant who is relying on invalidity must move quickly and file the petition, not merely plead it.
For the plaintiff, the risk is that the suit slows down while the petition runs. Delhi's IP Division often lists the suit and the petition together to reduce that delay, and our page on trademark infringement and passing off suits explains how the suit itself proceeds, and our guide on how long a trademark suit takes gives realistic timelines.
Step by step: a rectification petition in the Delhi High Court
Pull the register and check the dates
Download the online status and register extract of the impugned mark, the registration certificate, and the full file including the application, examination report and any opposition. Note the application date, the date of entry on the register, the class and the specification of goods or services.
Investigate use and gather your own evidence
Have the rival's market use investigated and collect proof of your own earlier use, reputation and the harm the registration causes. For bad faith, collect the distributor agreement, emails and invoices showing the relationship.
Send a notice where it helps
In some cases a notice asking the owner to voluntarily withdraw or restrict the registration produces a quick result, especially where the mark is unused. Where the owner is likely to rush to court against you, skip this step and file.
File the petition
The petition sets out the petitioner's interest, the grounds under Sections 47, 57, 9, 11 and 18, and the reliefs sought, supported by an affidavit and documents. The registered owner and the Registrar of Trade Marks are made respondents. Court fee is paid as prescribed, and a copy is served in advance.
Notice and pleadings
The court issues notice. The owner files a counter statement, often with evidence of use, and the petitioner files a rejoinder. Pleadings and admission and denial of documents are completed before the Joint Registrar.
Evidence and hearing
Many petitions are decided on affidavits and documents. Where facts are seriously disputed, the court may permit cross-examination. Final arguments are heard by the IP Division judge, often together with any connected suit.
Order and implementation
If the petition succeeds, the court directs the Registrar to remove or vary the entry. The Registry implements the order and the online record is updated. The order can be appealed to a Division Bench within the time allowed, and the losing party may also approach the Supreme Court.
Time and cost at each stage (typical ranges, not promises)
| Stage | Typical time | Court fee and expenses (general) |
|---|---|---|
| Register search, file inspection and use investigation | One to three weeks | Search and investigator costs; official fees for certified copies |
| Drafting and filing the petition | Two to four weeks after evidence is ready | Court fee for a rectification petition under the IPD Rules; check the current court fee |
| First hearing and notice | Usually within weeks of filing | Process fee |
| Counter statement and rejoinder | Three to six months | Nominal |
| Admission and denial before the Joint Registrar | A few months, depending on the list | Nominal |
| Final hearing and order (uncontested) | Around six months to a year | Nominal |
| Final hearing and order (contested) | One to three years, more if cross-examination is allowed | Commissioner fees if evidence is recorded |
| Appeal to Division Bench | Filed within the period allowed; decided in months to years | Court fee on appeal |
Our professional fees are discussed at the first meeting and agreed in writing, stage by stage. A non-use petition against an absent owner costs far less than a contested bad faith case with evidence.
Documents you will need
About the impugned registration
- Online status page and register extract
- Registration certificate and application file
- Trade Marks Journal advertisement
- Examination report and any opposition record
- Any notices or suits by the owner against you
Your earlier use and reputation
- Invoices from the earliest year you claim, then a sample from each year
- Advertisements, catalogues, brochures and website archives
- Sales and promotional expense figures, ideally certified by a chartered accountant
- Your own trademark applications and registrations
- Statutory licences and registrations showing the mark, such as FSSAI or drug licences
For bad faith and non-use
- Distributor, franchise, employment or partnership agreements
- Emails and messages showing the owner knew of your brand
- Investigator's report on whether the mark is in use
- Market and online searches for the mark
Filing papers
- Board resolution or authority for the signatory
- Vakalatnama
- Affidavit supporting the petition
- Translations of documents not in English or Hindi
If your registration is under attack
A rectification petition against your mark is not a death sentence. The registration is prima facie valid, and the petitioner must make out its grounds. Your counter statement is the most important document you will file. It should set out how and when you adopted the mark, the history of use with documents, sales and advertising figures, and why the petitioner is not a person aggrieved or is acting only to escape an infringement claim.
If the attack is non-use, gather invoices and evidence of use within the relevant five year window and up to three months before the petition. If use was only on some goods, consider offering to restrict the specification to save the rest. If a challenge says your mark is descriptive, show that it has acquired distinctiveness through use under Section 32, with evidence of how customers identify you by it. If the mark was assigned to you, prove the chain of assignments and their recordal at the Registry.
Time limits for the counter statement are fixed by the court and the IPD Rules; missing them can lead to the petition being decided on the petitioner's material alone. Owners also sometimes make the mistake of stopping use or changing the mark during the petition, which can be read as an admission. Speak to a lawyer before changing anything.
What the order does, and what follows
A successful petition ends with a direction to the Registrar to remove the mark, to restrict it to certain goods or services, or to correct an entry. The Registry acts on the certified copy of the order, and the status online changes. Once removed, the mark no longer gives its former owner a statutory right, though any common law rights from use may remain and can still be argued in a passing off claim.
The effects spread. An application of yours that was objected to on the strength of the removed mark can now proceed, so write to the Registry with the order. A pending infringement suit based on the removed registration loses its statutory footing. A defendant who obtained removal of the plaintiff's mark can seek costs. Where the court restricts rather than removes a mark, both sides need to read the new specification carefully, because disputes often continue over what falls inside it.
An appeal from a single judge's order in a rectification petition lies to a Division Bench of the Delhi High Court; our page on commercial appeals explains the time limit and process. Beyond that, the Supreme Court can be approached by special leave. Where both sides keep litigating over the same brand in several forums, a negotiated coexistence or assignment, recorded before the court, often makes more sense than years of appeals.
Mistakes that sink rectification petitions
- Counting the five years wrongly. Non-use runs from the date the mark is entered on the register, and the period must end three months before filing. Many petitions are filed too early.
- Thin proof of prior use. Claiming use since 2010 with invoices only from 2018 invites the court to treat 2018 as your start date.
- Not showing why you are aggrieved. A petition that does not explain the petitioner's own trade and interest risks failing at the threshold, as in the Infosys case.
- Missing the Section 124 window. A defendant given three months to file rectification who does not do so loses the plea of invalidity in the suit.
- Filing in two forums. Parallel applications before the Registrar and the High Court on the same ground waste money and can be dismissed.
- Using rectification when opposition was available. If the mark is only advertised, file opposition within four months rather than waiting for registration.
- Ignoring the jurisdiction debate. Until the larger bench decides, choose a forum that is safe on both views where you can.
A made-up example: a spice brand and its former distributor
Here's a made-up example. A family business in Khari Baoli has sold packaged spices under the name 'Shahi Rasoi' since 2011, mainly in Delhi, Haryana and Rajasthan. From 2015 to 2019 a distributor in Jaipur handled its Rajasthan sales. After the relationship ends badly, the family finds that the distributor applied in 2017 to register 'Shahi Rasoi' for spices in his own name, and the mark was registered in 2019 by the Delhi office of the Trade Marks Registry. The distributor now sends notices to the family's retailers saying they are selling infringing goods.
The family's own application has been objected to on the basis of the distributor's registration. Their papers include invoices from 2011 onwards, the 2015 distribution agreement, emails in which the distributor placed orders for 'Shahi Rasoi' cartons, and advertisements in trade magazines.
A rectification petition is filed in the Delhi High Court on the grounds of the family's prior use, the distributor's bad faith and lack of proprietorship under Section 18. Because the distributor has also threatened retailers, a suit for passing off and groundless threats is filed alongside, and the court lists both together. The distributor files a counter statement claiming he designed the mark, but his own earliest invoice is from 2015 and bears the family's address as manufacturer.
After pleadings and arguments on affidavits, the court directs removal of the registration. The family's application is then taken up by the Registry. The names and dates here are invented, and every real case turns on its own evidence.
What to do this week
Download the register extract and status of the mark you want removed, and note the dates of application and entry on the register. Gather your earliest invoices and advertisements and put them in date order. If the problem is non-use, arrange a discreet market and online check before you send any notice. If you have been sued, note the date of any Section 124 order, because the three month period is strict.
If you have not yet secured your own brand, our guide on protecting a trademark before going to court covers registration and record keeping, and the guide on the Intellectual Property Division explains how the IP Division lists and hears these cases. A dispute that also involves a copied website address belongs partly under domain name disputes.
Advocate B.K. Singh's practice is to decide forum and strategy only after reading the register file and the client's own evidence of use, because those two documents usually decide the case. For advice on your papers, or for an update on the jurisdiction question pending before the larger bench, contact Advocate B.K. Singh.
Frequently asked questions
Can I cancel a trademark that someone else registered first if I used it earlier?
Yes, prior use is one of the strongest grounds for rectification. If you used the mark before the other party's application date and built goodwill under it, the registration can be cancelled under Section 57 read with Section 11. The case turns on dated proof of your use.
Where do I file a trademark rectification after the IPAB was abolished?
Rectification can be filed before the Registrar of Trade Marks or the High Court. The IPAB's work went to the High Courts in 2021, and in Delhi rectification petitions are heard by the High Court's Intellectual Property Division. If an infringement suit is pending, the petition must go to the High Court.
How long must a trademark be unused before it can be removed?
Under Section 47, the usual ground is non-use for a continuous period of five years or more, counted from the date the mark was actually entered on the register and ending three months before the petition is filed. The owner can resist by proving genuine use or special circumstances that prevented use.
Is there a time limit to file a trademark cancellation petition?
The Trade Marks Act does not fix a single deadline for rectification, but delay and acquiescence can count against you, especially in bad faith and prior use cases. For non-use, the timing is set by the five year rule. File as soon as the registration starts affecting you.
What is a person aggrieved in trademark rectification?
It is someone whose trade or interest is genuinely affected by the registration, such as a trader whose own application is blocked or who is threatened with infringement. A person with no business interest in the mark cannot file. The petition should state the petitioner's interest clearly.
Can a registered trademark be partly cancelled?
Yes. The court can restrict a registration to the goods or services on which it is actually used, or vary the entry in other ways, instead of removing it entirely. Partial removal is common in non-use cases where the owner uses the mark on only some listed goods.
What happens to my infringement suit if the defendant files rectification?
Under Section 124, if the court finds the defendant's plea of invalidity prima facie tenable, the suit is stayed on that question until the rectification petition is decided. The court can still grant or continue an interim injunction meanwhile.
Can I challenge a trademark before it is registered?
Yes, by filing an opposition under Section 21 within four months of the mark's advertisement in the Trade Marks Journal. Opposition is usually cheaper and faster than rectification, so keep a watch on the journal for marks close to yours.