TRADE MARKS RULES, 2002
.—(1) These rules may be called the Trade Marks Rules, 2002.
(2) They shall come into force on the date on which the Act comes into force.2
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1. Vide G.S.R. 114 (E), dated 26th February, 2002, published in the Gazette of India, Extra., Pt. II, Sec. 3(i), dated 26th February, 2002.
2. 15th September, 2003 vide S.O. 1048 (E), dated 15-9-2003, published in the Gazette of India, Extra., Pt. II, Sec. 3(ii), dated 15th September, 2003.
.—(1) In these rules, unless the context otherwise requires,—
(a) “Act” means the Trade Marks Act, 1999 (47 of 1999);
(b) “agent” means a person authorised to act under section 145 of the Act;
(c) “application for registration of a trade mark” includes the trade mark for goods or services contained in it;
(d) “appropriate office of the Trade Marks Registry” means the relevant office of the Trade Marks Registry as specified in rule 4;
(e) “class fee” means the fee prescribed for the filing of an application for registration of a trademark in a particular class;
(f) “convention country” means a country or group of
.—“Principal place of business” in India means—
(i) where a person carries on business in the goods or services concerned in a trade mark—
(a) if the business is carried on in India at only one place, that place;
(b) if the business is carried on in India at more places than one, the place mentioned by him as the principal place of business in India;
(ii) where a person is not carrying on a business in the goods or services concerned in a trade mark—
(a) if he is carrying on any other business in India at only one place, that place;
(b) if he is carrying on any other business in India at mor
The appropriate office of the Trade Marks Registry for the purposes of making an application for registration of a trade mark under section 18 or for giving notice of opposition under section 21 or for making an application for removal of a trade mark under section 47 or cancelling or varying the registration of a trade mark under section 57 or for any other proceedings under the Act and the rules shall be—
(a) in relation to a trade mark on the Register of Trade Marks at the notified date, the office of the Trade Marks Registry within whose territorial limits—
(i) the principal place of business in India of the registered proprietor of the trade mark as entered in the register at such date is situate;
(ii) where there is no entry in the register as to the pr
No change in the principal place of business in India or in the address for service in India, as the case may be,—
(a) of a registered proprietor or of any of the jointly registered proprietors in relation to any trade mark on the register at the notified date, made or effected subsequent to that date; or
(b) of an applicant for registration or of any of the joint applicants for registration in relation to any trade mark for which an application for registration is either pending at the notified date or is made on or after that date, made or effected subsequent to that date or to the date of filing of such application, as the case may be,
shall affect the jurisdiction of the appropriate office of the trade marks registry.
In respect of every trade mark on the register at the notified date or registered thereafter the Registrar shall cause to be entered in the register, the appropriate office of the trade marks registry and the Registrar may, at any time, correct any error in the entry so made.
Every application and proceeding pending before the Registrar at the notified date in relation to a trade mark shall be deemed to have been transferred to the appropriate office of the trade marks registry.
.—(1) Save as otherwise provided in sub-rule (2), all applications, notices, statements or other documents or any fees authorised or required by the Act or the rules to be made, served, left or sent or paid at or to the trade marks registry in relation to a trade mark on the Register of Trade Marks on the notified date or for which an application for registration is pending on, or is made on or after the notified date, shall be made, served, left or sent or paid to the appropriate office of the trade marks registry.
(2) Documents or fees authorised or required by the Act or the rules to be sent or paid may be sent or paid at or to either the appropriate office or the head office of the trade mark registry in the following matters:—
(a) communication and other documents including affidavits in relation to an application filed for
Subject to the provisions of rule 8, where an application, notice, statement or other document or any fee authorised or required by the Act or the rules is made, served, left or sent or paid, at or to an office inadvertently which is not the appropriate office of the Trade Marks Registry, the Registrar may on his own or on a request in writing return such application, notice, statement or document to the appropriate office if he is satisfied that it was a bona fide error by the applicant:
Provided that the period for which such application, notice or statement or document is retained by the office which is not the appropriate office shall be excluded for the purposes of computing the period of limitation where any of such application, notice, statement or document is required to be presented within the prescribed period:
Provided further
A notice or communication relating to an application, matter or proceeding under the Act or the rules may be issued by the Head of Office or any other officers authorised by the Registrar.
(1) The fees to be paid in respect of applications, oppositions, registration, renewal, expedited examination or reports or any other matters under the Act and the rules shall be those specified in the First Schedule, hereinafter referred to as the prescribed fees.
(2) Where in respect of any matter, a fee is required to be paid under the rules, the form or the application or the request of the petition thereof, it shall be accompanied by the prescribed fee.
(3) Fees may be paid in cash or sent by money order addressed to the Registrar or by a bank draft issued or by a cheque drawn on a scheduled bank at the place where the appropriate office of the Trade Marks Registry is situated and if sent through post, shall be deemed to have been paid at the time when the money order or the properly addressed bank draft or cheque would be delivered
(1) The Forms set forth in the Second and the Third Schedules shall be used in all cases to which they are applicable and may be modified as directed by the Registrar to meet other cases.
(2) Any Form, when filed at the Trade Marks Registry, shall be accompanied by the prescribed fee.
(3) A requirement under this rule to use a Form as set forth in the Schedules is satisfied by the use either of a replica of that Form or of a Form which is acceptable to the Registrar and contains the information required by the Form as set forth and complies with any direction as to the use of such a Form.
(4) The Registrar may after informing the public in the Journal, specify such Forms as are required to be submitted in electronic mode. Thereafter, such Forms shall be completed in such a manner as may be spe
(1) Subject to any other directions that may be given by the Registrar, all applications, notices, statements or other documents except trade marks, authorised or required by the Act or the rules to be made, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar shall be neatly handwritten or typewritten or lithographed or printed in Hindi or in English in large and legible characters with deep permanent ink upon strong paper, and except in the case of affidavits, on one side only, and of size of approximately 33 centimetres by 20 centimetres and shall have on the left hand pan thereof a margin of not less than 4 centimetres.
(2) Duplicate documents including copies of trade marks shall be filed at the Trade Marks Registry if at any time required by the Registrar.
(3) The Registrar may after informing the pub
(1) A document purporting to be signed by a partnership firm shall be signed by at least one of the partners stating that he signs on behalf of the firm and a document purporting to be signed by a bodycorporate shall be signed by a director or by the secretary or other principal officer of the bodycorporate. The capacity in which an individual signs a document on behalf of a partnership or a bodycorporate shall be stated below his signature.
(2) Signatures to any document shall be accompanied by the name of the signatory in Hindi or in capital letters, if signed in English.
(1) All applications, notices, statements, papers having representations affixed thereto, or otherdocuments authorised or required by the Act or the rules to be made, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar or any other person may be sent through the post by a prepaid letter.
(2) An application or a document so sent shall be deemed to have been made, served, left or sent at the time when the letter containing the same would be delivered in the ordinary course of post.
(3) In proving such sending, it shall be sufficient to prove that the letter was properly addressed and put into the post.
(4) After the filing of an application at the Trade Marks Registry, any person while making any correspondence relating thereto shall furnish the following particul
(1) Names and addresses of the applicants and other persons shall be given in full, together with their nationality, calling and such other particulars as are necessary for identification.
(2) In the case of a firm, the full name and nationality of every partner thereof shall be stated.
(3) In the case of an application from a convention country and persons having no principal place of business in India, their addresses in their home country shall be given in addition to their address for service in India.
(4) In the case of a body corporate or firm, the country of incorporation or the nature of registration, if any, as the case may be, shall be given.
(1) Every application for registration of a trade mark shall state the principal place of business in India, if any, of the applicant or in the case of joint applicants, of such of the joint applicants as have a principal place of business in India.
(2) Subject to the provisions of rules 18, 19 and 21, any written communication addressed to an applicant, or in the case of joint applicants to a joint applicant, in connection with the registration of a trade mark, at the address of his principal place of business in India given by him in the applicationshall be deemed to be properly addressed.
(1) An address for service in India shall be given -
(a) by every applicant for registration of a trade mark who has no principal place of business in India;
(b) in the case of joint applicants fof registration of a trade mark, if none of them has a principal place of business in India;
(c) by the proprietor of a trade mark who had liis principal place of business in India at the date of making the application for registration but has subsequently ceased to have such place,
(d) by every applicant in any proceeding under the Act or the rules and every person filing a notice of opposition, who does not have a principal place of business in India.
(e) by every person granted leave to intervene under rule 94.
An applicant for registration of a trade mark or an opponent filing a notice of opposition may notwithstanding that he has a principal place of business in India, if he so desires, may specifically request in writing, the Registrar with an address in India to which communications in relation to the application or opposition proceedings only may be sent. Such address of the applicant or the opponent shall be deemed, unless subsequently cancelled, to be the actual address of the applicant or the opponent, as the case may be, and all communications and documents in relation to the application or notice of opposition may be served by leaving them at, or sending them by post to such address of the applicant or the opponent, as the case may be.
The Registrar may, at any time when a doubt arises as to the continued availability of an address for service in India entered in the register, request the person for whom it is entered, by letter directed to any other address entered in the register or if no such address is entered in the register to the address at which the Registrar considers that the letter would reach him, to confirm the address for service in India and if within two months of making such a request the Registrar receives no such confirmation, he may strike the entry in the register of the address for service in India and require such person to furnish a fresh address for service in India or his address at the principal place of business in India, if he has any at that time.
(1) The authorisation of an agent for the purpose of section 145 shall be executed in Form TM-48 or in such other written form as the Registrar may deem sufficient and proper.
(2) In the case of such authorisation, service upon the agent of any document relating to the proceeding or matter shall be deemed to be service upon the person so authorising him; all communications directed to be made to such person in respect of the proceeding or matter may be addressed to such agent, and all appearances before Registrar relating thereto may be made by or through such agent.
(3) In any particular case, the Registrar may require the personal signature or presence of an applicant, opponent, proprietor, registered user or other person.
[(1) For the purposes of registration of trademarks, the goods and services shall be classified as per current edition of 'the International Classification of goods and services (NICE Classification)' published by World Intellectual Property Organization (WIPO).
(2) The Registrar shall publish a class wise and alphabetical index of such goods and services, including goods and services of Indian origin.]
4. Substituted by the Trade Marks (Amendment) Rules, 2013 vide Notification No. GSR21(E) dated 14.01.2013 w.e.f. 08.07.2013 for the following : -
"22. Classification of goods and services.--
(1) For the purposes of the registration of trade marks, goods and services shall be classified in the manner specified in the Fourth Schedule.
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An application for preliminary advice by the Registrar under sub-section (1) of section 133 shall be made in Form TM-55 in respect of any goods or services comprised within any one class of goods or services as published by the Registrar under sub-rule (2) of rule 22, along with the fees specified in Entry No. 50 of the FIRST SCHEDULE and accompanied by one representation of the trade mark.]
5. Substituted by the Trade Marks (Amendment) Rules, 2013 vide Notification No. GSR21(E) dated 14.01.2013 w.e.f. 08.07.2013 for the following : -
"23. Preliminary advice by Registrar as to distinctiveness.--
(1) An application for preliminary advice by the Registrar under sub-section (1) of section 133 shall be made in Form TM-55 in respect of any goods or services comprised within any one class in the Fou
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(3) Any person may request the Registrar, in Form TM-60 to cause a search to be made and for issue of certificate under sub-section (1) of section 45 of Copyright Act, 1957 (14 of 1957) to the effect that no trademark identical with or deceptively similar to such artistic work, as sought to be registered as copyright under the Copyright Act, 1957 (14 of 1957) has been registered as a trade mark under the Trade Marks Act, 1999(47 of 1999) in the name of, or that no application has been made under that Act for such re-registration by any person other than the applicant. The certificateshall ordinarily be issued within thirty working days of the date of request:
Provided, however, the Registrar may call for a statement of requirements from the applicant and if the requirements are not complied within two months from the date of such
(1) An application to the Registrar for the registration of a trademark shall be signed by the applicant or his agent.
(2) An application to register a trade mark for a specification of goods or services included in any one class shall be made in Form TM-1.
(3) An application to register a trade mark under sub-section (2) of section 154 for a specification of goods or services included in any one class from a convention country shall be made in Form TM-2.
(4) A single application for the registration of a trade mark for different classes of goods or services from convention country under sub-section (2) of section 154 sliall be made in Form TM-52.
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(7) (a) An application under section 63(1) to regis
(1) Where a right to priority is claimed by reason of an application for registration of a trade mark duly filed in a convention country under section 154, a certificate by the Registry or competent authority of that trade marks office shall be included in an application for registration under sub-rule (3), (4), (6), (7)(b), (8)(b), (11), (17)(b) or (18)(b) of rule 25, as the case may be, and it shall include the particulars of the mark, the country or countries and the date or dates of filing of application and such other relevant particulars as may be required by the Registrar.
(2) Unless such certificate has been filed at the time of the filing of the application for registration, there shall be filed, within two months of the filing of such application certifying or verifying to the satisfaction of the Registrar, the date of the filing of the application, the country or countri
An application to register a trade mark sliall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods or services mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.
(1) Every application for the registration of a trade mark, and where additional copies of the application are required every such copy, shall contain a representation of the mark in the space (8cm x 8 cm) provided on the application form for that purpose:
Provided that in any case the size of such representation shall not exceed 33 centimetres by20 centimetres with a margin of 4 centimetres on the left hand side.
(1) Every application for registration of a trade mark shall, except as hereinafter provided, be made in triplicate and shall be accompanied by five additional representations of the mark, The representations of the mark on the application and each of its copies and the additional representations shall correspond exactly with one another. The additional representations shall in all cases be noted with the specification and class or classes of goods or services for which registration is sought, the name and address of the applicant, together with the name and address of his agent, if any, the period of use, if any, and such other particulars as may from lime to lime be required by the Registrar and shall be signed by the applicant or his agent.
(2) Where an application contains a statement to the effect that the applicant wishes to claim combination of colours as the distinctive fea
(1) All representations of trade marks shall be of a durable nature, and each additional representation required to be filed with an application for registration shall be mounted on a sheet of strong paper of the size of approximately 33 centimetres by 20 centimetres, leaving a margin of not less than 4centimetres on the left hand part of the sheet.
(2) If the Registrar is not satisfied with any representation of a mark he may at any time requireanother representation satisfactory to him to be substituted before proceedings with the application.
(3) Where representation of a trademark cannot be given in the manner set forth hereinabove, a specimen or copy of the trademark may be sent either in full size or on a reduced scale and in such form as the Registrar may think most convenient.
(1) Where an application is made for the registration of series trade marks under sub-section (3) of section 15, copies of representation of each trade mark of the series shall accompany the application in the manner set forth in rules 28 and 29.
(2) An applicant claiming to be the proprietor of a series trade mark under sub-section (3) of section15 may apply to the Registrar in Form TM-8 or TM-37; as the case may be, for its registration as a series for one registration and there shall be included in each such application a representation of the all trade marks in a class or in each class claimed to be in the series. The Registrar shall, if satisfied that the marks constitutes a series proceed further with the applications.
(3) Atany time before the publication of the application in the Journal, the applicant applying undersub-rule (2)
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2. Omitted by the Trade Marks (Second Amendment) Rules, 2010 vide Notification No. GSR1024(E) dated 29.12.2010 w.e.f. 29.12.2010 for the following : -
"32. Request for search of a company name.--
Any person may, after the Registrar has informed the public in the Journal permitting a request in Form TM-11 request the Registrar to cause a search to be made and for issuance of a certificate pursuant to clause (ii) of sub-section (2) of section 20 of the Companies Act, 1956 (1 of 1956) to the effect that no trade mark identical with or deceptively similar to the name of the company in respect of which the request is made has been registered as a trade mark or is pending under the Trade Marks Act, 1999(47 of 1999)"
Where a trade mark contains a word or words in scripts other than Hindi or English, there shall be endorsed on the application form and the additional representations thereof, a sufficient transliteration and translation to the satisfaction of the Registrar of each such word in English or inHindi and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.
Where the name or representation of any person appears on a trade mark the applicant shall, if the Registrar so requires, furnish him with the consent in writing of such person in case he is living or, in case his death took place within twenty years prior to the date of the application for registration of the trade mark, of his legal representative, as the case may be, to the use of the name or representation and in default of such consent the Registrar may refuse to proceed with the application for registration of the trade mark.
(1) Where the name or description of any goods or services appears on a trade mark, the Registrar may refuse to register such mark in respect of any goods or services other than the goods or services so named or described.
(2) Where the name or description of any goods or services appear on a trade mark, which name or description in use varies, the Registrar may permit the registration of the trade mark for those andother goods or services on the applicant giving an undertaking that the name or description will be varied when the trade mark is used upon goods or services covered by the specification other than the named or described goods or services. The undertaking so given shall be included in the advertisement of the application in the Journal under section 20.
Subject to sub-rule (2) of rule 11, where an application for registration of a trade mark does not satisfy the requirement of any of the provisions of the Act or rules, the Registrar shall sent notice thereof to the applicant to remedy the deficiencies and if within one month of the date of the notice the applicant fails to remedy any deficiency so notified to him, the application may be treated as abandoned.
(1) After the receipt of the official number of an application under sub-rule (1) of rule 37, an applicant may request for expedited examination of an application for registration of a trade mark in Form TM-63 together with a declaration stating the reason for the request, on payment of five times the application fee.
(2) If the Registrar is satisfied on the basis of declaration filed under sub-rule(1) that an expedited examination of the application is warranted, he shall cause the expedited examination of such application in the order in which the requests are filed and may ordinarily issue the examination report within three months of the date of such request.
(3) Where the Registrar declines the request under sub-rule (1), the applicant shall be entitled to have the fee refunded:
Provided
A notice of withdrawal of an application for the registration of a trade mark under sub-section 2 of section 133, or sub-rule (2) of rule 24, for the purpose of obtaining repayment of any fee paid on the filing of the application, shall be given in writing within one month from the date of the receipt of communication mentioned in sub-rule (4) of rule 38.
(1) The decision of the Registrar under rule 38 or rule 42 after a hearing or without a hearing if the applicant has duly communicated his observations in writing and has stated that he does not desire to be heard, shall be communicated to the applicant in writing and if the applicant intends to appeal from such decision he may within thirty days from the date of receipt of such communication apply in Form TM-15 to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.
(2) In a case where the Registrar makes any requirements to which the applicant does, not object the applicant shall comply therewith before the Registrar issues a statement in writing under sub-rule (1).
(3) The date when the statement in writing under sub-rule (1) is received shall be deemed to be the d
An applicant for registration of a trade mark may, whether before or after acceptance of his application but before the registration of the mark, apply in Form TM-16 accompanied by the prescribed fee for the correction of any error in or in connection with his application or any amendment of his application:
Provided however, 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.
(1) If, after the acceptance of an application but before the registration of the trade mark, the Registrar has any objection to the acceptance of the application on the ground that it was accepted in error, or that the mark ought not to have been accepted in the circumstances of the case, or proposes that the mark should be registered only subject to conditions, limitations, divisions or to conditions additional to or different from the conditions, or limitations, subject to which the application has been accepted, the Registrar shall communicate such objection in writing to the applicant.
(2) Unless within thirty days from the date of receipt of the communication mentioned in sub-rule (1) the applicant amends his application to comply with the requirements of the Registrar or applies for a hearing, the acceptance of the application shall be deemed to be withdrawn by the Registrar
Where an application relates to a series trade marks differing from one another in respect of the particulars mentioned in sub-section (3) of section 15, the Registrar may, if he thinks fit, insert with the advertisement of the application a statement of the manner in which the several trade marks differ from one another.
In the case of an application to which clause (b) of sub-section (2) of section 20 applies, the Registrar may, if he so decides, instead of causing the application to be advertised again, insert in the Journal a notification setting out the number of the application, the class or classes in which it was made, the name and address of the principal place of business in India, if any, of the applicant or where the applicant has no principal place of business in India his address for service in India, the Journal number in which it was advertised and the correction or amendment made in the application.
Any person may request the Registrar in Form TM-58 to be informed of the number, and date of the Journal in which a trade mark which is sought to be registered specified in the Form was advertised and the Registrar shall furnish such particulars to the person making the request.
(1) A notice of opposition shall contain ,-
(a) in respect of an application against which opposition is entered -
(i) the application number against which opposition is entered;
(ii) an indication of the goods or services listed in the trade mark application against which opposition is entered; and
(iii) the name of the applicant for the trade mark,
(b) in respect of the earlier mark or the earlier right on which the opposition is based ,-
(i) where the opposition is based on an earlier mark, a statement to that effect and an indication of the status of earlier mark;
(ii) where available, the application number or r
(1) The counterstatement required by sub-section (2) of section 21 shall be sent in triplicate in Form TM-6 within two months from the receipt by the applicant of the copy of the notice of opposition from the Registrar and shall set out what facts, if any, alleged in the notice of opposition, are admitted by the applicant. A copy of the counterstatement shall be ordinarily served by the Registrar to the opponent within two months from the date of receipt of the same.
(2) The counterstatement shall be verified in the same manner as the notice of opposition as stated in clause (e) of Sub-rule(1) of rule 48.
(1) Within two months from services on him of a copy of the counterstatement or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.
(2) If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.
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(1) Within two months or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow, on the receipt by the applicant of the copies of affidavits in support of opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counterstatement and or on the evidence already left by him in connection with the application in question. In case the applicant relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies thereof.
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Within one month from the receipt by the opponent of the copies of the applicant's affidavit or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request in Form TM-56 allow, the opponent may leave with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies thereof. This evidence shall be confined to matters strictly in reply.
No further evidence shall be left on either side, but in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.
Where there are exhibits to affidavits filed in an opposition a copy or impression of each exhibit shall be sent to the other party on his request and at his expense, or, if such copies or impression cannot conveniently be furnished, the originals shall be left with the Registrar in order that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.
Where a document is in a language other than Hindi or English and is referred to in the notice of opposition, counterstatement or an affidavit filed in an opposition proceeding, an attested translation thereof in Hindi or English shall be furnished in duplicate.
(1) Upon completion of the evidence if any, the Registrar shall give notice to the parlies of the first date of hearing. Such notice shall be ordinarily given within three months of completion of the evidence. The date of hearing shall be for a date at least one month after the date of the first notice. Within fourteen days from the receipt of the first notice, any party who intends to appearshall so notify the Registrar in Form TM-7. Any party who does not so notify the Registrar within the time as aforesaid may be treated as not desiring to be heard and the Registrar may act accordingly in the matter.
(2) If sufficient cause for adjournment is not shown by either of the parties the Registrar may proceed with the matter forthwith.
(3) If the applicant is not present at the adjourned date of hearing and has not notified his intention to
The security for costs which the Registrar may require under sub-section (6) of section 21 may be fixed at any amount which he may consider proper, and such amount may be further enhanced by him at any stage in the opposition proceedings.
(1) Where a trade mark is registered as associated with any otlier marks, the Registrar shall note in the register in connection with the first mentioned mark the registration numbers of the marks with which it is associated and shall also note in the register in connection with each of the associated marks the registration number of the first mentioned mark as being a mark associated therewith.
(2) An application under sub-section (5) of section 16 to dissolve the association as respects any of the trade marks registered as associated trade marks shall be made in Form TM-14 and shall include statement of the grounds of the application.
In case of death of any applicant for the registration of a trade mark after the date of his application and before the trade mark has been entered in the register, the Registrar may, on proof of the applicant's death and on proof of the transmission of the interest of the deceased person, substitute in the application his successor in interest in place of the name of such deceased applicant and the application may proceed thereafter as so amended.
(1) The certificate of registration of a trade marie to be issued by the Registrar under sub-section (2) of section 23 shall be in Form O-2 with such modification as the circumstances of any case may require, and the Registrar shall annex a copy of the trade mark to the certificate.
(2) The certificate of registration referred to in sub-rule (1) shall not be used hi legal proceedings or for obtaining registration abroad.
(3) The Registrar may issue a duplicate or further copies of the certificate of registration on request by the registered proprietor in Form TM-59 accompanied by the prescribed fee. An unmounted representation of the marie exactly as shown in the form of application for registration thereof at the time of registration shall accompany such request.
1[Provided that if the Regist
(1) An application for the renewal of the registration of a trade mark shall be made in Form TM-12and may be made at any time not more than six months before the expiration of the last registration of the trade mark.
(2) Such application for renewal may be filed by the person who is the proprietor of the registered trade mark or his agent.
(3) If the proprietor, as set forth in the application for renewal is not the same person or the same legal entity as the registered proprietor, continuity of title from the registered proprietor in whose name the last renewal was effected to the present owner shall be shown in the first instance by way of affidavit along with supporting chain of documents.
(4) The Registrar may accept an application for renewal from the managing trustee, executors, administ
(1) At a date not less than one month and not more than three months before the expiration of the last registration of a trade mark, if no application in Form TM-12 for renewal of the registration together with the prescribed fee has been received, the Registrar shall notify the registered proprietor or in the case of a jointly registered trade mark each of the joint registered proprietors and each registered user, if any, in writing in Form O-3 of the approaching expiration at the address of their respective principal places of business in India as entered in the register or where such registered proprietor or registered user has no principal place of business in India at his address for service in India entered in the Register.
(2) Where, in the case of a mark the registration of which (by reference to the date of application for registration) becomes due for renewal, the mark is
If, at the expiration of last registration of a trade mark, the renewal fees has not been paid, the Registrar may remove the trade mark from the register and advertise the fact forthwith in the Journal:
Provided that the Registrar shall not remove the trade mark from the register if an application for payment of surcharge is made under proviso to sub-section (3) of section 25 in Form TM-10 within six months from the expiration of the last registration of the trade mark.
An application for the restoration of a trade mark to the register and renewal of its registration under sub-section (4) of section 25, shall be made in Form TM-13 after six months and within one year from the expiration of the last registration of the trade mark accompanied by the prescribed fee. The Registrar shall, while considering the request for such restoration and renewal have regard to the interest of other affected persons.
Upon the renewal or restoration and renewal of registration, a notice to that effect shall be sent to the registered proprietor and every registered user and the renewal or restoration and renewal shall be advertised in the Journal.
(1) For the purpose of this Chapter, unless the context otherwise requires; -
(a) 'Article' means article referred to in Madrid Protocol;
(b) "electronic form" shall have the meaning as is assigned to it in clause (r) of sub-section (1) of section 2 of the Information Technology Act, 2000(No. 21 of 2000);
(2) Words and expressions used in these rules, in the context of international application or international registration under Chapter IVA of the Act, but not defined shall have the same meaning respectively assigned to them in the Madrid Protocol or the Common Regulations;
An International Application or any communication relating thereto for transmission to International Bureau or any advice by way of notification of extension of protection to India resulting from the international registration shall be in English.
Any notice or communication relating to both an international application under section 36D and international registration where India has been designated, under section 36E, shall be issued by the Registrar only in electronic form, and any response thereto shall also be received likewise.
International application originating from India, or any communication relating thereto in accordance with the Common Regulations shall be filed electronically through the Trade Marks International Application System.
(1) Where an international application is filed under section 36D for transmission to the International Bureau, the Registrar shall certify the contents of the application in Form MM2(E) as provided by International Bureau subject to the payment of fees as specified in Entry No 88 of the First Schedule.
(2) Where the international application complies with the requirements, the Registrar shall so certify in the international application indicating also the date on which the said international application was received; and shall forward the same to the International Bureau within two months from the date of receipt of the said application
(3) Where the international application does not meet the requirements, the Registrar shall not forward it to the International Bureau, and shall require the applicant by notice to comply with the requir
A handling fee as specified in First Schedule shall be payable to the Registrar for certification and transmittal of international application to the International Bureau and such fee shall be paid in Indian rupees electronically along with the application.
(1) On receipt of advice from the International Bureau about an international registration designating India and notification about the extension of protection resulting from such international registration, the Registrar shall enter all the particulars thereof electronically in a record called the 'Record of Particulars of International Registration'. Any change in the particulars as and when received from the International Bureau shall be entered in the said record.
(2) Any entry made in such record shall, to the extent that it applies to India as a designated contracting party, have the same effect as if it had been recorded by the Registrar in the Register of Trade Marks.
(1) The advice referred to in rule 67G shall be examined ordinarily within two months from the date of receipt of such advice.
(2) Where, the Registrar finds that the mark which is the subject of an international registration designating India, cannot be protected, he shall, before the expiry of refusal period applicable under article 5 of the Madrid Protocol, notify to the International Bureau a provisional refusal of protection.
(3) Where there are no grounds for refusal to grant protection, the Registrar shall advertise the particulars concerning international registration under section 20 of the Act in a separate part of the Trade Marks Journal ordinarily within a period of six months from the date of receipt of advice.
(4) Where an opposition is filed under section 21 of the Act, the Regi
Where the protection resulting from an international registration has ceased to have effect, or varied, in India, as a result of legal proceedings under the Act, the Registrar shall notify the International Bureau accordingly.
Where an international registration is cancelled at the request of office of origin, the provisions of article 9 quinquies of the Protocol shall apply to such international registration in so far as it designates India.
Where an international registration designating India is in respect of a collective mark or a certification mark, the regulations governing the use of such collective mark or certification mark shall be submitted directly, by the holder of that international registration to the registrar within the period of one month from the date of advice by the International Bureau.
Where an international registration is deemed to replace the registration held in India under sub-section (6) of section 36E of the Act, the registrar shall, upon request of the holder of international registration take note of the international registration and make necessary entry in the Register maintained under sub-section (1) of section 6 of the Act. Thereafter, the Registrar shall notify the International Bureau accordingly under rule 21 of the Common Regulations.
subject to provisions of the Act, the provisions of the Madrid Protocol, Common Regulations and Administrative Instructions shall apply in relation to international applications originating from India and international registrations where India has been designated.]
An application to register the title of a person who becomes entitled by assignment or transmission to a registered trade mark shall be made in Form TM-24 or TM-23 according as it is made by such person alone or conjointly with the registered proprietor.
(1) A person applying for registration of his title, under rule 68, shall, along with his request on form TM-23 or TM-24, file original document, duly stamped original instrument or deed, as the case may be, purporting to transfer the title in the trade mark and a statement of case in support of his request. If the Registrar so requires, the statement of case shall be verified by an affidavit in form TM-18:
Provided that the Registrar may permit the applicant to submit the duly certified copy of theinstrument or deed, in case the applicant justifies that original instrument or deed cannot be submitted.
(2) The Registrar shall dispose of an application made under rule 68 ordinarily within three months from the date of application, and intimate the same to the applicant.
(3) After entry of the t
(1) An application to the Registrar for the registration under section 49, of a person as a registered user of a registered trade mark, shall be made jointly by that person and the registered proprietor of the trade mark, in Form TM-28 and shall be accompanied by the following-
(a) the agreement in writing or a duly authenticated copy thereof, entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the trade mark;
(b) the documents and correspondence, if any mentioned in the agreement referred to in clause (a) entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the trade mark or duly authenticated copies thereof.
(2) There shall be filed along with the application, an a
The agreement referred to in clause (a) of sub-rule (1) of rule 80 shall-
(a) set out the particulars specified in sub-clause (i) to (iv) of clause (b) of sub-section (1) of section 49;
(b) disclose the terms as to royalty and other remuneration payable to the registered proprietor by the proposed registered user for the permitted use of the trade mark;
(c) provide means for bringing the permitted use to an end when the relationship between the parties or the control by the registered proprietor over the permitted use ceases; and
(d) contain a condition that when the registered trade mark is used by the proposed registered user in relation to his goods or services, other than goods or services for export, the mark shall be so described as clearly to
The Registrar under sub-section (2) of section 49, shall, if satisfied that the application and the accompanying documents comply with the relevant provisions of the Act and the rules, and the matters specified in sub-clause (i) to(iv) of clause (b) of sub-section 1 of section 49, register the proposed registered user in respect of the goods or services as to which he is so satisfied.
(1) The Registrar shall give a notice in writing to the applicants where he proposes to accept the application subject to any conditions, restrictigns or limitations. The notice shall state the grounds on which the Registrar proposes to issue such orders and shall inform the applicants that they are entitled to be heard.
(2) Unless within one month from the receipt of the notice mentioned in sub-rule (1) the registered proprietor and the proposed registered user apply for a hearing, the Registrar may refuse the application or to accept it conditionally, as the case may be.
(3) If the registered proprietor and the proposed registered user apply for a hearing the Registrar shall appoint a time for the hearing within two months and shall give them not less than a month's notice of the time so appointed.
&nbs
(1) Where the Registrar under sub-section (2) of section 49 accepts an application for registration as registered user, he shall register the proposed registered user as registered user.
(2) The entry of a registered user in the register shall state the date on which the application for registration of registered user was made, which date shall be deemed to be the date of registration as registered user of the person mentioned in the entry. The entry shall also state, in addition to the particulars and statements mentioned in paragraph (i) to (iv) of sub-clause (b) of clause (1) of section49, the name, description and principal place of business in India of the registered user and if he does not cany on business in India his address for service in India.
The registration as registered user of a trade mark, shall not be deemed to imply an approval, of the agreement in so far as it relates to the transmission of any money, as consideration for the use of the said trade mark, to any place outside India.
A notification in writing of the registration of a registered user shall be sent by the Registrar to the registered proprietor of the trade mark, to the registered user and to every other registered user whose name is entered in relation to the same trade mark and shall also be inserted in the Journal within three months of such entry in the register.
An application by the registered proprietor of a trade mark for the variation of the registration of a registered user of that trade mark under clause (a) of subsection (1) of section 50 shall be made in Form TM-29 and shall be accompanied by a statement of the grounds on which it is made, and where the registered user in question consents, by the written consent of the registered user,
(1) An application for the cancellation of the registration of a registered user under sub-clause (b) to sub-clause (d) of sub section (1) of section 50 shall be made in Form TM-30 or Form TM-31, as the case may be, and shall be accompanied by a statement of the grounds on which it is made.
(2) In case of the registration of a registered user for a period, in accordance with paragraph (iv) of sub-clause (b) of sub-section (1) of section 49, the Registrar shall cancel the entry of the registered user at the end of that period. Where some or all the goods or services are omitted from those in respect of which a trade mark is registered, the Registrar shall at the same time omit them from those specifications of registered users of the trade mark in which they are comprised. The Registrar shall notify every cancellation or omission under this sub-rule to the registered users whose per
The Registrar may at any time, by notice in writing, require the registered proprietor to furnish him information under sub-section (1) of section 51 and take action in accordance with sub-section (2) of that section.
(1) The Registrar shall notify in writing applications under section 50 to the registered proprietor and each registered user (not being the applicant in either case) of the trade mark.
(2) Any person notified under sub-rule (1) who intends to intervene in the proceedings, shall within one month of the receipt of such notification give notice to the Registrar in Form TM-32 to the effect andshall send therewith a statement of the grounds of his intervention. The Registrar shall thereupon serve or cause to be served copies of such notice and statement on the other parlies, namely, the applicant, the registered proprietor, the registered user whose registration is the subject matter of the proceeding in question and any other registered user who intervenes.
(3) In the case of any application made under section 50, the applicant and any pers
An application under sub-section (2) of section 58 shall be made in Form TM-16 or Form TM-33 or Form TM-34 or Form TM-50 as may be appropriate by a registered user of a trade mark or by such person as may satisfy the Registrar that he is entitled to act in the name of a registered user;
and the Registrar may require such evidence by affidavit or otherwise as he may think fit as to the circumstances in which the application is made.
An application to the Registrar under Section 47, 57, 68 or 77 for the making, expunging or varying of any entry relating to a trade mark or a collective mark or certification, trade mark in the register shall be made in triplicate in Form TM-26, or Form TM-43, as the case may be, and sliall be accompanied by statement in triplicate setting out fully the nature of the applicant's interest, the facts upon which he bases his case and the relief which he seeks Where the application is made by a person who is not the registered proprietor of the trade mark in question, the application and the statement aforesaid shall be left at tlie Trade Marks Registry triplicate. In case there arc registered users, such application and statements sliall be accompanied by as many copies thereof as there ;ue registered users. A copy each of the application and statement shall be ordinarily transmitted within one month by the Registrar to the registered proprietor and to each of the regi
Within two months from the receipt by a registered proprietor of the copy of the application mentioned in rule 92 or within such further period not exceeding one month in the aggregate, he shall send to the Registrar in Form TM-6 a counterstatement in triplicate of the grounds on which the application is contested and if he docs so, the Registrar shall serve a copy of the counterstatement on the person making the application within one month of the receipt of the same. The provisions of rules 50 to 57 shall thereafter apply mutatis mutandis to the further proceedings on the application. The Registrar shall not, however, rectify the register or remove the mark from the register merely because the registered proprietor has not filed a counterstatement unless he is satisfied that the delay in filing the counterstatement is wilful and is not justified by the circumstance of the case. In any case of doubt any party may apply to the Registrar for directions.
Any person, other than the registered proprietor, alleging interest in a registered trade mark in respect of which an application is made under Rule 92 may apply in Form TM-27 for leave to intervene, staling the nature of his interest, and the Registrar may refuse or grant such leave after hearing (if so required) the parties concerned, upon such conditions and terms including undertakings or conditions as to security for cost as he may deem fit to impose.
(1) The Notice, which the Registrar is required to give under sub-section (4) of section 57, shall be sent in writing to the registered proprietor, to each registered user, if any, and to any other person who appears from the register to have any interest in the trade mark, ana shall state the grounds on which the Registrar proposes to rectify the register and shall also specify the time, not being less than one month from the date of such notice, within which an application for a hearing shall be made.
(2) Unless within the time specified in the notice aforesaid, any person so notified sends to the Registrar a statement in writing setting out folly the facts upon which he relies to meet the grounds stated in the notice or applies for a hearing, he may be treated as not desiring to take part in the proceedings and the Registrar may act accordingly.
(1) A registered proprietor or a registered user of a trade mark, the address of whose principal place of business in India or whose address in his home country, as the case may be, is changed so that the entry in the register is rendered incorrect, shall forthwith request the Registrar in Form TM-34 to make the appropriate alteration of the address in the register, and the Registrar shall alter the register accordingly if he is satisfied in the matter.
(2) A registered proprietor or a registered user of a trade mark, whose address for service in India entered in the register is changed, whether by discontinuance of the entered address or otherwise, so that the entry in the register is rendered incorrect, shall forthwith request the Registrar in Form TM-50to make the appropriate alteration of the address in the register, and the Registrar shall alter the register accordingly if he
Where an application has been made under sub-section (l)'of section 58 for the alteration of the register by correction, change, cancellation or striking out of goods or services or for the entry of amemorandum, the Registrar may require the applicant to furnish such evidence by affidavit or otherwise as he may think fit, as to the circumstances in which the application is made. Such application shall be made in Form TM-16, TM-33, TM-34, TM-35, TM-36, or TM-50 as may be appropriate and a copy thereof shall be served by the applicant on the registered user or users, if any, under the registration of the trade mark in question and to any other person who appears from the register to have an interest in the trade mark.
Where a person applies under section 59 for leave to add to or alter his registered trade mark, he shall make the application in writing in Form TM-38 and shall furnish five copies of the mark as it will appear when so added to or altered. A copy of the application and of the trade mark so amended or alteredshall be served by the applicant on every registered user, if any.
(1) The Registrar shall consider the application and shall, if it appears to him expedient, advertise the application in the Journal before deciding it.
(2) Within three months from the date of advertisement under sub-rule (1), or within such further period not exceeding one month in the aggregate as the Registrar may allow, any person may give notice of opposition to the application in Form TM-39 and may also send therewith a statement of his objections. The notice and the statement, if any, shall be sent in triplicate. In case there arc any registered users under the registration of the trade mark in question, such notice and statement shall also be accompanied by as many copies thereof as there are registered users. A copy of each of the notice and statement shall be transmitted forthwith by the Registrar to the registered proprietor and each registered user, if any, and within
If the Registrar decides to allow the application he shall alter the mark in the register accordingly and insert in the Journal a notification that the mark has been altered. If the application has not been advertised under rule 99, he shall also advertise in the Journal the trade marks as altered.
.—(1) On the classification set forth in the Fourth Schedule being amended, the registered proprietor of a trade mark may apply to the Registrar in Form TM-40 for the conversion of the specification relating to his trade mark, so as to bring that specification into conformity with the amended classification. The application shall include a request for the like conversion of the specification in respect of any registered users under that registration, and the registered proprietor shall serve a copy of the application on the registered user or users of the trade mark, if any.
(2) The Registrar shall, thereupon, notify in writing to the registered proprietor and to the registered user or users, if any, a proposal showing the form which, in the Registrar’s view, the amendment of the register should take in consequence of the proposed conversion. Two or more registrations of a trade ma
A request in Form TM-73 or TM-74 as the case may be, may be made to the Registrar for the refusal or invalidation of a registered trade mark 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 trade mark 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 G
.—(1) Where an application for the registration of a trade mark 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) If the specification of goods or services contained in the initial application for registration of a trade mark makes a reference to a class or classes in the Fourth Schedule in which they do not fall, the Registrar shall require the applicant to correct the classification error in Form TM-16.
(3) Application filed under sub-section (2) of section 18 when ordered to be advertised shall be published in a separate section of the Journal.
.—(1) Where an application is made in Form TM-53 under proviso to section 22 for the division of a single pending application, such application shall be divided into two or more separate applications on the payment of a divisional fee and such class fees as are appropriate in accordance with the division.
(2) At any time before registration an applicant may request the Registrar in Form TM-53 for a division of his initial application for registration into two or more separate applications (divisional applications), indicating for each division the specification of goods or services. The Registrar shall treat each divisional application as a separate application for registration with the same filing dates as the initial application.
(3) In the case of a request to divide some goods or services, but not all in a class, a divisional fee for
.—(1) An application for extension of time under section 131 (not being a time expressly provided in the Act or prescribed by rule 79 or by sub-rule (4) of rule 80 or a time for the extension of which provision is made in the rules) shall be made in Form TM-56.
(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 and notify 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.
The time within which a person entitled under section 128 to an opportunity of being heard shall, exercise his option of requiring to be heard, shall, save as otherwise expressly provided in the Act or the rules, be one month from the date of a notice which the Registrar shall give to such person before determining the matter with reference to which such person is entitled to be heard. If within that month such person is required to be heard, the Registrar shall appoint a date for the hearing and shall give 10 days’ notice thereof.
The decision of the Registrar in the exercise of any discretionary power given to him by the Act or the rules shall be notified to the person affected.
.—(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, if the Registrar thinks fit and on such terms as he may direct.
(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.
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.
).—(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.
(1) In relation to a trade mark for which an application for registration is made on or after the notified date, the application as well as any proceeding under the Act and the rules shall, in the event of a hearing becoming necessary, be heard at the office of the Trade Marks Registry at which such application was made under sub-section (3) of section 18, or at such place within the territorial jurisdiction of that office as the Registrar may deem proper.
(2) In relation to a trade mark for which an application for registration is pending before the Registrar, at the notified date, hearing, if any, in respect of such application or any proceeding under the Act and the rules shall be taken at the appropriate office of the Trade Marks Registry or at such place within the territorial jurisdiction of that office as the Registrar may deem proper.
Where any opposition duly instituted under the rules is not contested by the applicant, the Registrar in deciding whether costs should be awarded to the opponent shall consider whether the proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was filed.
Notwithstanding anything in rule 112, costs in respect of fees specified under entries, 12, 14 and 15 of the First Schedule and of all stamps used on and affixed to affidavits used in the proceedings shall follow the event.
Subject to the provisions of rules 112 and 113, 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 Sixth Schedule, as he considers reasonable having regard to all the circumstances of the case.
An application to the Registrar for the review of his decision under sub-section (c) of section 127 shall be made in Form TM-57 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 Registrar shall 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.
.—(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 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 shall be taken—<
The documents mentioned in sub-section (1) of section 148 shall be available for inspection at the head office of the Trade Marks Registry. A copy of the register and such of the other documents mentioned in section 148, as the Central Government may by notification in the Official Gazette direct, shall be available for inspection at each branch office of the Trade Marks Registry. The inspection shall be on payment of the prescribed fee and at such times on all the days on which the offices of the Trade Marks Registry are not closed to the public, as may be fixed by the Registrar.
The Central Government may direct the Registrar to distribute the Journal and any other document which it may consider necessary, to such places as may be fixed by the Central Government in consultation with the State Governments and notified from time to time in the Official Gazette.
The Registrar may furnish certified copies of any entry in the register or certified copies of any documents referred to in sub-section (1) of section 148 or of any decision or order of the Registrar, or give 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 or do, upon receipt from any person of an application therefore in Form TM-46 accompanied by the prescribed fee. The Registrar shall not be obliged to include in any certificate or certified copy, a copy of any mark unless he is furnished by the applicant with a copy thereof suitable for the purpose:
Provided that the Registrar may furnish an expedited certified copies of the documents aforementioned within thirty working days on a request in Form TM-70 received to that effect on payment of five times the
.—(1) Where a certificate relating to the registration of a trade mark is desired for use in obtaining registration in any territory outside India, the Registrar shall include in the certificate a copy of the mark and may require the applicant for the certificate to furnish him with a copy of the mark suitable for that purpose, and if the applicant fails to do so, the Registrar may refuse to issue the certificate.
(2) Where a trade mark is registered without limitation of colour, the copy of the mark to be included in the certificate, may be either in the colour in which it appears upon the register or in any other colour or colours and it shall be stated in the certificate that the trade mark is registered without limitation of colour.
(3) The Registrar may state in the certificate such particulars concerning the registration of the mar
The Registrar may from time to time may 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.
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.
A copy of every application to Intellectual Property Appellate Board under the Act shall be served on the Registrar.
Where the Intellectual Property Appellate Board has certified as provided in section 141 with regard to the validity of a registered trade mark the registered proprietor thereof may request the Registrar in Form TM-47 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.
.—(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.
Where an application for the registration of a trade mark has been withdrawn/abandoned or refused or a trade mark 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 three years after the application is withdrawn or is abandoned or is refused or after the trade mark 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 trade mark concerned.
The provisions of Part I, Part IV, and VII of the rules shall, in their application to collective marks, apply only subject to the provisions of this Part.
.—(1) An application for the registration of a collective mark for goods or services under sub-section (1) of section 63 shall be made to the Registrar in Form TM-3, Form TM-64 or in the case of a single application Form TM-66 or Form TM-67 as the case may be, in triplicate and shall be accompained by five additional representations of the mark. The draft regulations to be submitted with the application under sub-section (1) of section 63 shall be in triplicate and shall be accompanied by Form TM-49.
(2) References in Part I of the rules to the acceptance of an application for the registration of a trade mark for goods or services, shall, in their application to collective mark, be substituted by references to authorisation to proceed with the application.
(3) An applicant for the registration of a collective mark shall not be deemed to
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 case shall be furnished in triplicate.
.—(1) The Registrar shall cause an application for the registration of a collective mark to be examined, in the first instance, as to whether it satisfies the requirement of the Act and the rules and issue a report to the applicant.
(2) The Registrar shall not refuse an application for the registration of a collective mark or accept the application subject to any conditions or limitations or impose amendments or modifications to the application or to the regulation without giving the applicant an opportunity of being heard and the procedure thereto shall be regulated by the provision of sub-rule (4) of rule 38 to rule 42.
.—(1) On acceptance of the application the Registrar shall cause the application to be advertised in the Journal and the provisions of rules 47 to 57 shall apply mutatis mutandis to further proceedings in the matter as they in relation to an application for the registration of a trade mark.
(2) In any case of doubt with regard to proceedings on the opposition to the registration of a collective mark, any party may apply to the Registrar for directions.
.—(a) An application by the registered proprietor of a collective mark for any amendment to the regulation under section 66 shall be made in Form TM-42 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 47 to 57.
(b) A collective mark may be renewed from time to time and the provision of rules 63 to 67 shall apply mutatis mutandis in respect of such request for renewal.
An application for removal of a collective mark from the register including on any of the grounds mentioned in section 68 shall be made in Form TM-43 and shall set forth particulars of the grounds on which the application is made. The provisions of rules 92 to 94 of these rules shall apply mutatis mutandis for further proceeding in the matter.
The provisions of Part I, Part IV and Part VII of the rules shall, in their application to certification trade marks, apply only subject to the provisions of this Part.
.—(1) An application for the registration of a certification trade mark under sub-section (1) of section 71 shall be made to the Registrar in Form TM-4, Form TM-65 and in the case of a single application in Form TM-68 or Form TM-69 as the case may be, in triplicate and shall be accompanied by five additional representations of the mark. The draft regulations to be submitted with the application shall be in triplicate and shall be accompanied by Form TM-49.
(2) References in Part I of the rules to the acceptance of an application for the registration of a trade mark, shall, in their application to certification trade mark, be substituted by references to authorisation to proceed with the application.
(3) An applicant for the registration of a certification trade mark shall not be deemed to have abandoned his application, if, in the circum
.—(1) The applicant shall forward a statement of case to the Registrar with the application setting out the grounds in which he relies in support of the application. Such case shall be furnished in triplicate.
(2) The Registrar shall cause the application for the registration of a certificate trade mark to be examined in the first instance as to whether it satisfies the requirement of the Act and the rules and issue a report to the applicant.
The Registrar shall not refuse an application for registration of a certification trade mark or accept the application subject to any conditions or limitations or impose amendments or modifications to the application or to the regulations without giving to the applicant an opportunity of being heard and the procedure thereto shall be regulated by the provisions of sub-rule (4) of rule 38 to rule 42 of these rules.
1) On acceptance of the application the Registrar shall cause the application to be advertised in the Journal and the provisions of rules 47 to 57 shall apply mutatis mutandis as they apply in relation to an application for the registration of a trade mark.
(2) In case of doubt with regard to the proceedings on the opposition to the registration of a certification trade mark, any party may apply to the Registrar for directions.
(3) A certification trade mark may be renewed from time to time and the provisions of rules 63 to 67 shall apply mutatis mutandis in respect of such request for renewal.
An application for cancellation or variation of registration of a certification trade mark on any of the grounds mentioned in section 77 shall be made in Form TM-43 and shall set forth particulars of the grounds on which the application is made. The provisions of rules 92 to 94 shall apply mutatis mutandis to further proceeding in the matter.
.—(1) An application by the registered proprietor of a certification trade mark under sub-section (2) of section 74 to alter the deposited regulation shall be made in Form TM-42 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 47 to 57.
(2) An application for the consent of the Registrar to the assignment or transmission of a certification trade mark under section 43 shall be made in Form TM-62.
For the purposes of rules 146 and 147—
“balanced numeral” means a trade mark consisting of either identical numerals or identical letters of not less than three nor more than seven digits;
“digit” includes a single letter;
“letter fraction” means a fraction containing one or more letters.
Subject to the provisions of this Part, the provisions of Part I, Part II, Part III and Part VII of the rules shall apply to trade marks in respect of textile goods as they apply to trade marks in respect of non-textile goods.
The expression “textile mark” means a trade mark used or proposed to be used in relation to goods specified in rule 144 as “textile goods” for the purpose of Chapter X of the Act.
The classes of goods in relation to trade marks to which Chapter X of the Act shall apply and which are in the Act and the rules referred to as textile goods shall be classes 22 to 27 (inclusive) of the Fourth Schedule.
.—(1) A separate application for the registration of a trade mark (other than a collective mark or a certification trade mark) shall be made in Form TM-22 or TM-45 as the case may be, in respect of each of the items of textile goods mentioned in the Fifth Schedule where the mark consists exclusively of letters or numerals or any combination thereof.
(2) The items of the Fifth Schedule shall be grouped as follows; and goods falling in each group shall be deemed to be similar goods, and goods falling in different groups shall not be deemed to be similar goods for the purpose of an application for the registration of trade marks consisting exclusively of letters or numerals or any combination thereof made under sub-rule (1) and proceedings relating thereto but not for any other purpose—
Group 1—Items 1, 4, 5, 8, 9, 10, 11, 12, 16, 19, 20, 2
In respect of textile goods the following marks shall not be capable of registration, namely:—
(a) any numerals of one digit or of more than six digits not being a balanced numerals;
(b) a single letter or any combination of letters of more than six letters, not being a balanced numeral;
(c) any combination of numerals and letters of more than eight digits;
(d) any fraction or letter fraction consisting of more than eight digits together;
(e) any fraction or letter fraction having less than three digits together;
(f) any combination of numerals, and fractions of more than six digits;
&
.—(1) A trade mark consisting of numerals, letters, fractions, letter fractions or any combination thereof, and not being a balanced numeral shall not be capable of being registered as a textile mark if it does not differ from a trade mark registered in the manner of a different person in respect of the same goods or similar goods—
(a) in the case of a numeral not exceeding four digits, in at least one corresponding digit;
(b) in the case of a numeral of five digits, in at least two corresponding digits;
(c) in the case of a numeral of six digits, in at least three corresponding digits;
(d) in the case of a combination of two letters, in at least one corresponding letter;
The Registrar of trade marks shall maintain a register of trade marks 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 trade marks agent.
1) Notwithstanding anything in rule 150, every person whose name has been entered in the register of trade marks agents maintained under the old law shall be deemed to be registered as a trade marks agent under these rules.
(2) The Registrar may publish in the Journal a code of conduct for registered trade marks agent authorising them to act as such.
Subject to the provisions of rule 151, a person shall be qualified to be registered as a trade marks agent if he—
(i) is a citizen of India;
(ii) is not less than 21 years of age;
(iii) has passed the examination prescribed in rule 154 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 a graduate of any university in India or possess an equivalent qualification; and
(v) is considered by the Registrar as a fit and proper person to be registered as a trade mark agent.
A person shall not be eligible for registration as a trade marks 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 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, whether within or without 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;
All applications under the provisions of this Part shall be made in triplicate and shall be sent to or left at that office of the Trade Marks Registry within whose territorial limits the principal place of business of the applicant is situate.
.—(1) Every person desiring to be registered as a trade marks agent shall make an application in Form
TMA-1.
(2) The applicant shall furnish such further information bearing on his application as may be required of him at any time by the Registrar.
.—(1) On receipt of an application for the registration of a person as a trade marks 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 before him for a written examination in Trade Marks Law and practice followed by an interview. The candidate will be expected to possess a detailed knowledge of the provisions of the Act and the rules and knowledge of the elements of Trade Marks Law.
(2) The qualifying marks for the written examination and for interview shall be forty per cent. and sixty per cent. respectively and a candidate shall be declared to have passed the examination only if he obtained an aggregate of fifty per cent. of the total marks.
After a candidate has been interviewed and any further information bearing on his application, which the Registrar may consider necessary has been obtained and if the Registrar considers the applicant eligible and qualified for registration as a trade marks agent, he shall send an intimation to that effect to the applicant and any person so intimated may pay the prescribed fee for his registration as a trade marks agent. Upon receipt of the prescribed fee the Registrar shall cause the applicant’s name to be entered in the register of trade marks agents and shall issue to him a certificate in Form O-4 of his registration as a trade marks agents.
The continuance of a person’s name in the Register of Trade Marks Agents shall be subject to his payment of the fees prescribed in First Schedule.
(1) The Registrar shall remove from the register of trade marks agents the name of any registered trade marks 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 trade marks agents, the name of any registered trade marks 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 151; or
(b) whom the Registrar has declared not to be a fit and proper person to remain in the
.—(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 trade marks agent, who in the opinion of the Registrar is engaged wholly or mainly in acting as agent in applying for trade marks 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 also refuse to recognise as agent in respect of any business under this rule any person who neith
.—(1) The Registrar may, on an application made in Form TMA-2 within six months from the date of removal of his name from the Register of trade marks agents accompanied by the fee specified in the First Schedule from a person whose name has been removed under clause (b) of sub-rule (1) of rule 157, restore his name to the register of trade marks agents and continue his name therein for a period of one year from the date on which his last annual fee became due.
(2) The restoration of a name to the register of trade marks agent shall be notified in the Journal and shall be communicated to the person concerned.
.—(1) A registered trade marks agent may apply in Form TMA-3 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 trade marks 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 trade marks agents.
(2) Every alteration made in the register of trade marks agents shall be notified in the Journal.
The Registrar shall ordinarily publish the list of agents in the register of trade marks agents shall be published in the Journal from time to time, and at least once in two years together with his address as entered in the register, the entries being arranged in the alphabetical order of the surnames of the registered trade marks agents and copies thereof shall be placed for sale.
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 trade marks agents under Part V of these rules, and the decision of the Appellate Board shall be final and binding.
For the purposes of this Part, unless the context otherwise requires,—
(a) “count” in relation to yarn means the relation of length to weight thereof either in the English system or Metric system, as follows:—
(i) The English count for yarn shall be the number of hanks each of 840 yards in length that weight one pound avoirdupois or in other words the number of yards of yarn that weight 8.3 grains.
(ii) The metric count for all yarn with the exception of raw and prepared silk shall represent the relation between 1000 metres of yarn to 500 grammes or 2 metres to 1 grammes or in other words half the number of hanks (each of 1,000 metres length) that weight 500 grammes.
The English system of counts
.—(1) In testing for length of piece-goods such as are ordinarily sold by the length or by the piece the measurement shall be made along the selvage.
(2) In testing piece-goods aforesaid for width the cloth shall be measured by each of the following methods and the mean of the measurements so taken shall be adopted. Care shall be exercised in applying each method to select a portion of the cloth where the creases are fewest, and the warp and weft respectively as straight as possible:—
(a) A double-fold of the cloth shall be laid on the table and the creases smoothed out, so that it may lie perfectly flat. The measuring rod shall then be placed across the cloth, and the finger and thumb run down the rod on each side of it across the cloth so as to once more flatten the creases. Care shall be taken in doing this to see that whilst
.—(1) In taking the measurements aforesaid the peculiarities of the cloth under measure shall be taken into consideration and due allowances be made for these characteristics.
(2) If owing to the peculiarities of the cloth it is found difficult to determine a reasonable degree of tension for purposes of measurement, the mean between stretching to the full and not stretching, shall be adopted.
(3) The influence of stretching for length on the width shall always be taken into account in measuring cloth. Where the cloth has been stretched lengthwise in the making, it will lose in length as the weft is straightened to measure the width. It may then have to be ascertained, whether the trade description of length does not become false in the process of making that for width correct. To ascertain this a measurement along the selvages both lengt
Yarns may be tested by the customs-collector for length and count when he has reason to suspect or on information by any informant that the trade description is false.
An examination of yarns to test the accuracy of the description of count or length shall be made, in the first instance, up to the limit of one bundle in every one hundred bales or fractions of one hundred bales in a consignment.
If, on such examination the difference between the average count or length and the described count or length is in excess of the variation permitted in the notification to be issued by the Central Government under section 121 of the Act, the importer or any other person having any claim to or in relation to, goods in question or otherwise interested may apply for a further testing.
The test to determine length of yarns shall be as follows:—
(i) From every one hundred bales, or fraction of 100 bales, in a consignment one bundle, shall be selected at random. The hanks in this bundle shall then be measured on the warp wheel one after the other, in the presence of the importer or any other person interested as is referred to in the last foregoing rule, or his representative and the length noted, the process being continued (within the limits of the bundle) until either the importer or other person, as the case may be, is satisfied that the yarn is short or the average of the length noted shows that it is of full length.
(ii) When the importer or other person is dissatisfied with the test aforesaid he may, on payment of the cost, require the customs-collector to measure more hanks up to one per cent. o
.—(1) The stove test may be applied by the customs officers only in cases where weighment by the ordinary methods shows the weight of the yarn to be short or in which the feel and appearance of yarn indicate that it is abnormally moist or over-conditioned or where the importer demands the test. Where the test is carried out on demand by the importer, the fee levied for carrying out the test shall be returned if the test fails to support the original determination of count and length by the customs officers. If more than one application of the test is demanded a further fee shall be levied for each fresh test, the whole sum charged being retained or refunded according to his final decision on the results of the tests.
(2) (a) In carrying out the stove test, in the case of cotton yarn a regain of
8 1/2 per cent. shall be added to the weig
The testing of piece-goods and yarn referred to in rules 164 to 170 shall be made at the customs laboratories or at such place and by such officer as the customs-collector may direct.
The customs-collector may require from any informant referred to in rule 166 security not exceeding five hundred rupees and where he is satisfied that the information given is wilfully false, the security shall be forfeited.
.—“Piece-goods such as are ordinarily sold by length or by the piece” (hereinafter referred as “piece-goods”) shall for the purposes of section 81 of the Act or the Customs Act, 1962 (52 of 1962) include cotton piece-goods, woollen piece-goods, silk piece-goods, art silk piece-goods of synthetic fiber and other piece-goods of mixed fabrics, shall not include the following descriptions of goods namely:—
(a) Alhambras, except Alhambras quiltings
Blankets.
Blind Cloth in cut-pieces.
Book-Binding cloth in cut-pieces.
Buckrams in cut-pieces.
Carpets (in rolls).
&
.—(1) Piece-goods which have been manufactured, bleached, dyed, printed or finished in India in premises which are a factory as defined in the Factories Act, 1948 (63 of 1948) shall be stamped with the particulars required under sub-section (1) of section 81.
(2) In the case of piece-goods manufactured outside India (each piece shall be marked with the name of the manufacturer, exporter, or wholesale purchaser in India of the goods and with the real length of the piece in standard yards or in standard metres as required under the Customs Act, 1962 (52 of 1962).
.—(1) The customs-collector may not detain any unstamped piece-goods if he is satisfied that although they are not mentioned in the list of excepted goods under rule 173 they are of such a nature that they would be liable to serious depreciation in value if stamped:
Provided, however, where a customs-collector exercises his discretion under this sub-rule, he shall forthwith report the case, sending a sample of the goods to the Central Government through the Central Board of Revenue, so that the question of issuing general orders in favour of such goods may be considered.
(2) Cotton and woollen piece-goods imported for the personal use of individuals or private associations of individuals and not for trade purposes need not be stamped.
.—(1) In marking the length of the piece-goods the words “yards” or “yds”, “metres” shall accompany the numerals, and in the case of cut-lengths or pieces of the kind other than that described in clause (b) of rule 173, the number of pieces shall be marked as well as the yards or metres on the front or outer face fold of the cut-piece, the figures being presented in a way to show clearly what they are intended to mean.
(2) The length shall be in standard yards or fractions of such yards or standard metres or fractions of a metre and shall represent the actual length of the goods, and not the length before shrinkage or dryage, resulting from processes such as dyeing, or from atmospheric changes which can reasonably be foreseen. Marking in inches or centimetres may be permitted on cloths of small dimensions and delicate make in accordance with the custom of the trade.
All markings required by sub-section (2) of section 81 shall be in English and the international form of Indian numerals shall be used.
.—(1) The weight of yarn or thread in each bundle or unit shall ordinarily be indicated thereon in pounds or ounces in the English system or in grammes according to the metric system.
(2) The length of threads in each bundle or unit shall be indicated thereon in yards or metres.
(3) The name of the manufacturer or of the wholesale purchaser in India shall be indicated in full or, provided that the said name is clearly and unambiguously indicated thereby in an abbreviated form, on each bundle or unit.
.—(1) Each bundle of cotton yarn shall be marked with the particulars required under sub-section (2) of section 81 of the Act by one or more inscribed wrappers, labels or cards applied, affixed or stitched thereto, provided that all the required particulars shall be contained on the exposed surface.
(2) Units of cotton thread shall be marked with the required particulars—
(a) when made up in skeins, by an inscribed label applied round each skein or bundle of skeins or secured by twine thereto;
(b) when made up in balls, by an inscribed label attached to each ball, or inserted therein but remaining exposed;
(c) when wound on cards, wheels, or stars, by inscription on the exposed portion of the card, wheel or star;
&nb
Where units of cotton thread are enclosed in a cover, such cover shall be marked with the required particulars.
All markings on bundles of cotton yarn or units of cotton thread shall be legible, distinct and in a colour which is not likely to be easily obliterated and which shall be different from the colour of the surface marked.
The count of cotton yarn shall ordinarily be expressed in English the metric system by adding the letter ‘S’ after the numeral or numerals where, however, a bundles is packed on the metric system, the count shall be accompanied by the words “metric count“ or by some other clear and definite indication conveying the fact and in the absence of such words or indication the marking shall be regarded as indicating that it is in the English system.
Nothing in rule 177 shall be construed as prohibiting the indication in any manner of other particulars relating to the cotton yarn or cotton thread so long as the conspicuousness of the required particulars is not affected thereby.
All premises where the work is done by members of one family with or without the assistance of not more than ten other employees and all premises controlled by a co-operative society where not more than twenty workers are employed in the premises shall be exempted from the operation of rules 177 to 182.
The Trade and Merchandise Marks Rules, 1959 are hereby repealed without prejudice to anything done under such rules before the coming into force of the rules.
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