Trademark Rules 2017 Continued

Re-classification of Goods in Respect of Existing Registration

  1. Re-classification in respect of existing registration.-
    (1) On the amendment in international classification of goods and services (NICE Classification), the registered proprietor  of a trademark may apply to the Registrar in Form TM-P for the conversion of the specification of goods and services relating to the trademark, so as to bring that specification into conformity with the amended classification.

(2) The Registrar may, thereupon, amend the description of goods and services or the classification as the case may be in accordance with international classification of goods and Services (NICE Classification).

(3) The amendment in the specification of goods or services or in the classification if approved shall be advertised in the Journal; thereafter the entry in the register in respect of that registration shall be modified accordingly.

CHAPTER VIII

MSCILLANEOUS

  1. Refusal or invalidation of registration of a trademark conflicting with a geographical indication.- A request in Form TM-O, may be made to the Registrar for the refusal or invalidation of a registered trademark by an interested party along with a statement of case together with an affidavit and which

(a) contains or consists of a geographical indication with respect to goods or class or classes of goods not originating in the territory of a country, or a region or locality in that territory which such geographical indication indicates, if the use of such geographical indication in the trademark for such goods, is of such nature as to confuse or mislead the persons as to the true place of origin of such goods or class or classes of goods;

(b) contains or consists of geographical indication identifying goods or class or classes of goods notified under sub-section (2) of section 22 of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (48 of 1999). 107. Single application under sub-section (2) of section 18- (1) Where an application for the registration of a trademark for different classes of goods or services is made under sub-section (2) of section 18, the specification of goods or services contained in it shall set out the classes in consecutive numerical order beginning with the lowest number and indicate in each class the goods or services appropriate to that class.

(2) Applications filed under sub-section (2) of section 18 when ordered to be advertised shall be published in a separate section of the Journal.

(3) The Registrar shall issue a single certificate of registration in respect of an application made under sub-section (2) of section 18, which has proceeded to registration. 108. Divisional Application. – (1) Where an application is made in Form TM-M under proviso to section 22 for the division of a single pending application, the registrar may, on payment of a divisional fee, divide such application into two or more separate applications.

(2) In case of division of application, The Registrar shall treat each divisional application as a separate application for registration with the same filing date as the initial application.

(3) Any time limit for any action by the applicant in relation to the initial application at the time of division shall be applicable to each new separate application created by division irrespective of the date of the division.

(4) In case of division of application, the Registrar shall assign an additional separate new serial number or numbers, as the case may be, and it shall be cross-referenced with the initial application.

(5) For the removal of doubt, it is clarified that no new registration shall be effected when a single application is divided. On the contrary, application already filed shall be merely separated or divided into individual files.

 

  1. Extension of time- (1) An application for extension of time under section 131 (not being a time expressly provided in the Act or prescribed by rule 85 or by sub-rule (3) of rule 86 or a time for the extension of which provision is made in the rules) shall be made in Form TM-M.

(2) Upon an application made under sub-rule (1) the Registrar, if satisfied that the circumstances are such as to justify the extension of the time applied for, may, subject to the provisions of the rules where a maximum time limit is prescribed and subject to such conditions as he may think fit to impose, extend the time not exceeding one month and communicate the parties accordingly and the extension may be granted though the time for doing the act or taking the proceeding for which it is applied for has already expired. 110. Exercise of discretionary power of Registrar.- Any person who has applied for the exercise of discretionary or other power of the Registrar and requires a hearing under section 128, shall inform the Registrar in writing of his intention to be heard within one month from the date of notice which the registrar shall give to such person before determining the matter. Upon the receipt of such information, if any, the Registrar shall appoint a date of hearing of not less than twenty one days and give notice thereof. 111. Communication of decision.- The decision of the Registrar in the exercise of any discretionary power given to him by the Act or the rules shall be communicated to the person affected. 112. Amendments and correction of irregularity in procedure.- (1) Any document or drawing or other representation of a trade mark may be amended, and any irregularity in procedure which, in the opinion of the Registrar, may be obviated without detriment to the interests of any person, may be corrected.

(2) The Registrar may require the amendment of any application or representation of a trade mark or any other document or the addition of any matter thereto in order to bring it in accordance with the formal requirements of the Act. 113. Directions not otherwise prescribed.- Where in the opinion of the Registrar, it is necessary for the proper prosecution or completion of any proceedings under the Act or rules for a person to perform an act, file a document or produce evidence, which is not provided for by the Act or the rules, the Registrar may by notice in writing require the person to perform the act, file the document or produce the evidence, specified in the notice. 114. Opinion of the Registrar under section 115(4)- (1) Where a matter has been referred to the Registrar for his opinion under proviso to sub-section (4) of section 115 such opinion shall be forwarded under a sealed cover within seven working days of the receipt of such written intimation to the referring authority and the Registrar shall ensure complete confidentiality in the matter so referred.

(2) The opinion under this rule shall be given by the Registrar or an officer specially authorised for this purpose under sub-section (2) of section 3 and the name of the designated officer shall be published in the journal.

Hearings

  1. Hearings.- (1) the hearing if any, in relation to any proceeding under the Act and rules may be held at the notified date and time and at such place within the territorial jurisdiction of the appropriate office as the Registrar may think fit:

Provide that the hearing may also be held through video-conferencing or through any other audio-visual communication devices and in such cases the hearing shall be deemed to have taken place at the appropriate office.

Explanation – For the purposes of this rule, the expression “communication device” has the same meaning as assigned to it in clause (ha) of sub section (ii) of section 2 of the Information Technology Act, 2000 (21 of 2000).

 

(2) Where an officer exercising the powers of the Registrar who has heard any matter under the Act or the rules, has reserved orders therein, is transferred from one office of the Registry to another or reverts to another appointment before passing an order or rendering decision therein, he may, if the Registrar so directs, pass the order or render the decision as if he had continued to be the officer in the office of the Trade Marks Registry where the matter was heard.

Awards of Costs by Registrar

  1. Costs in uncontested cases.- (1) Where a reasonable notice has been given to an applicant by the opponent before filing the notice of opposition and the applicant fails to contest the opposition, the Registrar may impose such costs on the applicant as may be specified in Forth Schedule.

(2) Where an opposition has been filed and the opponent fails to contest the proceedings after the applicant has filed counter statement, the Registrar may impose such costs on the opponent as may be specified in Forth Schedule. 117. Exception to rule 116. – Notwithstanding anything in rule 116, costs in respect of fees specified under entries, 10 and 11 of the First Schedule and of all stamps used on and affixed to affidavits used in the proceedings shall follow the event. 118. Scale of costs.-Subject to the provisions of rules 116 and 117, in all proceedings before the Registrar, he may, save as otherwise expressly provided by the Act, award such costs, not exceeding the amount admissible thereof under the Forth Schedule, as he considers reasonable having regard to all the circumstances of the case.

Review of Decisions of the Registrar

  1. Application for review of Registrar’s decision.- An application to the Registrar for the review of his decision under sub-section (c) of section 127 shall be made in Form TM-M within one month from the date of such decision or within such further period not exceeding one month thereafter as the Registrar may on request allow, and shall be accompanied by a statement setting forth the grounds on which the review is sought. Where the decision in question concerns any other person in addition to the applicant, such application and statement shall be left in triplicate and the Registrarshall forthwith transmit a copy each of the application and statement to the other person concerned. The Registrar may, after giving the parties an opportunity of being heard, reject or grant the application, either unconditionally or subject to any conditions or limitations, as he thinks fit.

Affidavit

  1. Form, etc.; of Affidavits.- (1) The Affidavits required by the Act and the rules to be filed at the Trade Marks Registry or furnished to the Registrar, unless otherwise provided in the Second Schedule, shall be headed in the matter or matters to which they relate, shall be drawn up in the first person, and shall be divided into paragraphs consecutively numbered; and each paragraph shall, as far as practicable, be confined to one subject. Every affidavit shall state the description and the true place of abode of the person making the same and shall bear the name and address of the person filing it and shall state on whose behalf it is filed.

(2) Where two or more persons join in an affidavit, each of them shall depose separately to such facts which are within his personal knowledge and those facts shall be stated in separate paragraphs.

(3) Affidavits – (a) In India, before any court or before any officer empowered such to administer oaths or to take affidavits or before the Registrar or before the Notary Public.

(b) In any country or place outside India, before a diplomatic or consular officer, within the meaning of the Diplomatic and Consular Officers (Oaths and Fee) Act, 1948 (41 of 1948), of

 

Such country or place or before a notary public or before a Judge or Magistrate, of the country or place.

(4) The person before whom an affidavit is taken shall state the date on which and the place where the same is taken and shall affix his seal, if any, or the seal of the office to which he is attached thereto and sign his name and description at the end thereof.

(5) Alterations and interlineations shall, before an affidavit is sworn or affirmed, be authenticated by the initials of the person before whom the affidavit is taken.

(6) Every affidavit filed before the Registrar in connection with any of the proceedings under the Act or the rules shall be duly stamped under the law for the time being in force.

Inspection of Documents by Public

  1. Inspection of documents.- The documents mentioned in sub-section (1) of section 148 shall be available for inspection at the appropriate office of the Trade Mark Registry on payment of the fee mentioned in First Schedule on all working days and at such times as may be fixed by the Registrar.

Certificates

  1. Certified copies of documents.- The Registrar may, on request being made in Form TM-M along with fees mentioned in First Schedulc, furnish certifical copics of any cntry in thc register or of any documents referred to in sub-section (1) of section 148 or of any decision or order of the Registrar, or of a certificate other than a certificate under sub-section (2) of section 23 as to any entry, matter or thing which he is authorised or required by the Act or the rules to make.

Provided that the Registrar may furnish an expedited certified copies of the documents aforementioned within seven working days on a request in Form TM-M received to that effect on payment fees as specified in First Schedule.

Explanation: A certified copy of any record available digitally with the Registrar shall be a duly certified copy of that record. 123. Power of Registrar to notify International Non-proprietary names. – The Registrar shall from time to time publish in the Journal, the words which are declared by the World Health Organisation as international non-proprietary names referred to in sub-section (b) of section 13.

Well-Known Trademarks

  1. Determination of Well Known Trademark by Registrar. – (1) Any person may, on an application in Form TM-M and after payment offee as mentioned in First schedule, request the Registrar for determination of a trademark as well-known. Such request shall be accompanied by a statement of case along with all the evidence and documents relied by the applicant in support of his claim.

(2) The Registrar shall, while determining the trademark as well-known take in to account the provisions of subsection (6) to (9) of section 11.

(3) For the purpose of determination, the Registrar may call such documents as he thinks fit.

(4) Before determining a trademark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.

(5) In case the trademark is determined as well-known, the same shall be published in the trademark Journal and included in the list of well-known trademarks maintained by the Registrar.

(6) The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.

Appeal to the Intellectual Property Appellate Board

  1. Time for appeal. – An appeal to the Intellectual Property Appellate Board from any decision of the Registrar under the Act or the rules shall be made within three months from the date of such decision.
  2. Service to the Registrar. – A copy of every application to Intellectual Property Appellate Board under the Act shall be served on the Registrar.

Certificate of Validity

  1. Certificate of validity to be noted. – Where the Intellectual Property Appellate Board has certified as provided in section 141 with regard to the validity of a registered trademark the registered proprietor thereof may request the Registrar in Form TM-M to add to the entry in the register a note that the certificate of validity has been granted in the course of the proceedings, particulars of which shall be given in the request. An officially certified copy of the certificate shall be sent with the request, and the Registrar shall record a note to that effect in the register and publish the note in the Journal.

Return of Exhibits and Destruction of Records

  1. Return of exhibits.- (1) Where the exhibits produced in any matter or proceeding under the Act or the rules are no longer required in the Trade Marks Registry, the Registrar may call upon the party concerned to take back the exhibits within a time specified by him and if the party fails to do so, such exhibits shall be destroyed.

(2) Where, before the notified date any exhibits have been produced in any proceeding, the Registrar may, if satisfied that it is no longer necessary to retain them call upon the party concerned to take back the exhibits within a time specified by him and if the party fails to do so, such exhibit shall be destroyed. 129. Destruction of records.- Where an application for the registration of a trademark has been withdrawn or abandoned or refused or a trademark has been removed from the register or in an opposition or rectification proceeding the matter has been concluded and no appeal is pending before the Intellectual Property Appellate Board, the Registrar may, at the expiration of one years after the application is withdrawn or is abandoned or is refused or after the trademark is removed from the register or the opposition or rectification proceeding is closed, as the case may be, destroy all or any of the records relating to the application, opposition or rectification or the trademark concerned.

PART II

SPECIAL PROVISIONS FOR COLLECTIVE TRADEMARKS 130. Rules to apply to collective trademarks.- The provisions of Part I, Part IV, and VII of these rules shall, in their application to collective trademarks, apply only subject to the provisions of this Part. 131. Application for registration and proceedings relating thereto.- (1) An application for the registration of a collective trademark for goods or services under sub-section (1) of section 63 shall be made to the Registrar in Form. TM-A along with the draft regulations.

(2) References in Part I of the rules to the acceptance of an application for the registration of a trademark for goods or services, shall, in their application to collective trademark, be Substituted by references to authorisation to proceed with the application.

(3) The address in India, if any, of an applicant to register a collective trademark shall be deemed to be the address of his principal place of business in India for all the purposes for which Such an address is required by the rules.

(4) The regulations governing collective trademarks shall specify, inter alia—

(a) the name of the association of persons and their respective office addresses; (b) the object of the association; (c) the details of members;

 

(d) the conditions for membership and relation of each member with the group; (e) the persons authorised to use the trademark and the nature of control the applicant exercise over the use of the collective trademark:

(f) the conditions governing use of the collective trademark, including Sanctions; (g) the procedure for dealing with appeals against the use of the collective trademark; (h) such other relevant particulars as may be called for by the Registrar. 132. Case accompanying application.- The applicant shall Submit to the Registrar along with his application a statement of case setting out the grounds on which he relies in Support of his application. Such statement of case shall be furnished in duplicate. 133. Examination, Hearing, Opposition, Registration, and Renewal. — The provisions related to examination, hearing, opposition, registration and renewal of trademarks shall apply mutatis mutandis in respect of collective trademarks. 134. Amendment of regulations relating to collective trademarks and renewal.- (a) An application by the registered proprietor of a collective trademark for any amendment to the regulation under Section 66 shall be made in Form TM-M and where the Registrar accepts any such amendment he shall advertise, such application in the Journal and further proceedings in the matter shall be governed by rules 42 to 51.

(b) A collective trademark may be renewed from time to time and the provision of rule 57 to 61 shall apply mutatis mutandis in respect of such request for renewal. 135. Removal of collective trademark.- An application for removal of a collective trademark from the register shall be made in Form TM-O and shall set forth particulars of the grounds on which the application is made. The provisions of rule 97 to 100 of these rules shall apply mutatis mutandis for further proceeding in the matter.

PART III

SPECIAL PROVISION FORCERTIFICATION TRADEMARKS

  1. Rules to apply to certification Trademarks.- The provisions of Part I of these rules shall, in their application to certification Trade Marks, apply only subject to the provisions of this Part. 137. Application for registration and proceedings relating thereto. – (1) An application for the registration of a certification trademarks for goods or services under sub-section (1) of section 71 shall be made to the Registrar in Form TM-A along with the draft regulations.

(2) References in Part I of the rules to the acceptance of an application for the registration of a trademark, shall, in their application to certification trademark, be substituted by references to authorisation to proceed with the application.

(3) The address in India, if any, of an applicant to register a certification trademark shall be deemed to be the address of his principal place of business in India for all the purposes for which such an address is required by the rules.

(4) The regulation governing a certification trademark shall specify, inter alia— (a) a description of the applicant; (b) the nature of the applicant’s business; (c) the particulars of infrastructure like Research and Development, technical manpower Support;

(d) the applicant’s competence to administer the certification Scheme; (e) the applicant’s financial arrangement; (f) an undertaking from the applicant that there will be no discrimination of any party if they meet the requirements set down in the regulations;

(g) the characteristic, which the trademark will indicate in the certified goods or in relation to the rendering of certified services;

(h) the manner of monitoring the use of the trademark in India; and

 

(i) such other relevant particulars as may be called for by the Registrar. 138. Statement of case accompanying application.- The applicant shall submit to the Registrar along with his application a statement of case setting out the grounds on which he relies in support of his application. 139. Examination, Hearing, Opposition, Registration, and Renewal.- The provisions related to examination, hearing, opposition, registration and renewal of trademarks shall apply mutatis mutandis in respect of certification trademarks. 140. Cancellation or variation of registration of certification trademark.- An application for cancellation or variation of registration of a certification trademark on any of the grounds mentioned in section 77 shall be made in Form TM-O and shall set forth particulars of the grounds on which the application is made. The provisions of rule 97 to 100 shall apply mutatis mutandis to further proceedings in the matter. 141. Alteration of deposited regulations and consent of the Registrar for assignment or transmission of certification Trademarks.- (1) An application by the registered proprietor of a certification trademark under sub-section (2) of section 74 to alter the deposited regulation shall be made in Form TM-M and where the Registrar decides to permit such alteration it shall be advertised in the Journal and further proceeding in the matter shall be governed by rules 42 to 51.

(2) An application for the consent of the Registrar to the assignment or transmission of a certification trademark under section 43 shall be made in Form TM-P.

PART IV REGISTRATION OF TRADEMARKS AGENTS

  1. Register of Trademarks Agents.- The Registrar of Trade Marks shall maintain a Register of trademarks agents wherein shall be entered the name, address of the place of residence, address of the principal place of business, the nationality, qualifications and date of registration of every registered trademarks agent. 143. Registration of existing registered trademarks agents, code of conduct, etc.- (1) Notwithstanding anything contained in rule 144, every person whose name has been entered in the register of trademarks agents maintained under the old law shall be deemed to be registered as a trademarks agent under these rules.

(2) The Registrar may publish in the Journal a code of conduct for the registered

trademarks agent authorising them to act as such. 144. Qualifications for registration.-Subject to the provisions of rule 145, a person shall be qualified to be registered as a trademarks agent if he

(i) is a citizen of India,

(ii) is not less than 21 years of age;

(iii) is a graduate of any university in India or possesses an equivalent qualification and has passed the examination prescribed in rule 148 or is an Advocate within the meaning of the Advocates Act, 1961 (25 of 1961) or is a member of the Institute of Company Secretaries of India;

(iv) is considered by the Registrar as a fit and proper person to be registered as a trademark agent. 145. Persons debarred from registration.- A person shall not be eligible for registration as a trademarks agent if he

(i) has been adjudged by a competent Court to be of unsound mind;

(ii) is an undischarged insolvent;

(iii) being a discharged insolvent has not obtained from the court or the appropriate forum as the case may, a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;

 

(iv) has been convicted by a competent court or the appropriate forum as the case may, whether within or outside India of an offence punishable with transportation or imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Central Government by order in this behalf, has removed the disability;

(v) being a legal practitioner has been held guilty of professional misconduct by any High Court in India;

(vi) being a chartered accountant, has been held guilty of negligence or misconduct by a High Court; or

(vii) being a registered trademarks agent has been held guilty of professional misconduct by the Registrar. 146. Manner of making application.- All applications under the provisions of this Part shall be made in duplicate and shall be sent to or submitted at that office of the Trade Marks Registry within whose territorial limits the principal place of business of the applicant is situate. 147. Application for registration as a trademarks agent.- (1) Every person desiring to be registered as a trademarks agent shall make an application in Form TM-G.

(2) The applicant shall furnish such further information bearing on his application as may be required of him at any time by the Registrar. 148. Procedure on application and qualifying requirements. – (1) On receipt of an application for the registration of a person as a trademarks agent, the Registrar, if satisfied that the applicant fulfils the prescribed qualifications, shall appoint a date in due course on which the candidate will appear for examination in Trade Marks Law and practice.

(2) The qualifying marks for the examination shall be as advertised by the Registrar. 149. Certificate of registration. – If the Registrar considers the applicant eligible and qualified under rule 144 for registration as a trademark agent, he shall enroll the candidate as a registered trademark agent after payment of prescribed fee and shall issue a certificate in Form RG-4 and the registration shall subsist till end of the financial year of the registration. 150. Continuance of the name in the register of Trade Marks Agents. – The continuance of a person’s name in the register of trademarks agents shall be subject to his payment of the fees prescribed in First Schedule. 151. Removal of agent’s name from the register of Trade Marks agents.- (1) The Registrar shall remove from the register of trademarks agents the name of any registered trademarks agent

(a) from whom’ a request has been received to that effect; or (b) from whom the annual fee has not been received on the expiry of three months from the date on which it became due.

(2) The Registrar shall remove from the register of trademarks agents, the name of any registered trademarks agent—

(a) who is found to have been subject at the time of his registration, or thereafter has become subject, to any of the disabilities stated in clauses (i) to(vii) of rule 145;or

(b) whom the Registrar has declared not to be a fit and proper person to remain in the Register by reason of any act of negligence, misconduct or dishonesty committed in his professional capacity;

(c) whose name has been entered in the register by an error or on account of misrepresentation or suppression of material fact:

Provided that before making such declaration under clauses (b) and (c) the Registrar shall call upon the person concerned to show-cause why his registration should not be cancelled and shall make such further enquiry, if any, as may be consider necessary.

(3) The Registrar shall remove from the register of trademarks agents the name of any registered trademarks agent who is dead.

(4) The removal of the name of any person from the register of trademarks agents shall be notified in the Journal and shall, wherever possible, be communicated to the person concerned. 152. Power of Registrar to refuse to deal with certain agents.- (1) The Registrar may refuse to recognise

(a) any individual whose name has been removed from, and not restored to the register; (b) any person, not being registered as a trademarks agent, who in the opinion of the Registrar is engaged wholly or mainly in acting as agent in applying for trademarks in India or elsewhere in the name or for the benefit of the person by whom he is employed;

(c) any company or firm, if any person whom the Registrar could refuse to recognise as agent in respect of any business under these rules, is acting as a director or manager of the company or is a partner in the firm.

(2) The Registrar shall refuse to recognise as agent in respect of any business under this rule any person who neither resides nor has a place of business in India.

  1. Restoration of removed names.- (1) The registrar may, on an application made in Form TM-G with fee as specified in the First Schedule, within three years from the date of removal of the name of a person from the Register of trademarks agents, whose name has been removed under clause (b) of sub-rule (1) of rule 51, restore his name to the register of Trade Marks agents.

(2) The restoration of a name to the register of trademarks agent shall be notified in the Journal and shall be communicated to the person concerned. 154. Alteration in the register of Trademarks Agents.- (1) A registered trademarks agent may apply in Form TM-G for alteration of his name, address of the place of residence, address of the principal place of business or qualifications entered in the register of trademarks agents. On receipt of such application and the fee prescribed in that behalf, the Registrar shall cause the necessary alteration to be made in the register of trademarks agents.

(2) Every alteration made in the register of trademarks agents shall be notified in the Journal. 155. Publication of the register of trademarks agents.- The Registrar shall ordinarily publish the list of agents in the register of trademarks agents from time to time, and at least once in two years together with their addresses as entered in the register. 156. Appeal.- An appeal shall lie to Intellectual Property Appellate Board from any order or decision of the Registrar in regard to the registration or removal of trademarks agents under Part IV of these rules, and the decision of the Appellate Board shall be final and binding.

Part V Language of the Trade Marks Registry

  1. Language of the Trade Marks Registry. – (1) The language of the Trade Marks Registry shall be English:

Provided that the parties to a proceedings before the Trade Marks Registry may file documents drawn up in Hindi, if they so desire:

Provided further that that where

(a) the Registrar permits the use of Hindi in the proceedings of the Tribunal and hearing in such proceedings, he may in his discretion direct English translation of pleadings and documents to be filed;

(b) the Trade Marks Registry located in “Region A’ as defined in clause (f) of rule 2 of the Official Languages (Use for Official Purposes of the Union) Rules, 1976, the Registrar may, in his discretion, make final orders either in Hindi or in English.

 

(2) Notwithstanding anything contained in paragraph (l), where a final order is made in Hindi, an authenticated English translation thereof shall simultaneously be prepared and kept on record.

PART VI.

REPEAL

  1. Repeal.- The Trade Marks Rules, 2002, are hereby repealed without prejudice to anything done under such rules before the coming into force of these rules.

 

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