Trade Marks Rules, 2002 Bare Act

The source publishes this enactment as a single document rather than provision by provision, so the whole text is below and there are no per-section pages for it. Nothing has been shortened.

Long title	The Trade Marks Rules, 2002
Type	Rules
Year	1999
Jurisdiction	Central
Ministry	Ministry of Commerce and Industry
Status	In force as published by the source
Text	Published as one document, as the source published it
Subjects	ip

YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 1/217 Trade Marks Rules, 2002 Ministry of Commerce & Industry (Department of Industrial Policy & Promotion) Notification New Delhi, the 26th February, 2002 TABLE OF CONTENTS Page

PART I Chapter I: Preliminary Short Title and Commencement.................................... 6 Definition ...................................................................... 6 Principal Place of Business in India .............................. 8 Appropriate Office of the Trade Marks Registry .......... 8 Jurisdiction of Appropriate Office not Altered by Change in the Principal Place of Business or Address for Service..................................................................... 9 Entry of the Appropriate Office in the Register ............ 10 Transfer of Pending Applications and Proceedings to Appropriate Offices of the Trade Marks Registry......... 10 Leaving of Documents, etc............................................ 10 Documents etc. Filed or Left not at the Appropriate Office ............................................................................ 10 Issue of Notices etc. ...................................................... 11 Fees ............................................................................... 11 Forms ............................................................................ 12 Size, etc. of Documents................................................. 12 Signing of Documents................................................... 12 Service of Documents ................................................... 13 Particulars of Address etc. of Applicants and Other Persons .......................................................................... 13 Statement of Principal Place of Business in India in an Application........................................................... 14 Address for Service ....................................................... 14 Address for Service in Application and Opposition Proceedings ................................................................... 14 Non-Availability of an Address for Service .................. 15 Agency .......................................................................... 15 Classification of Goods or Services .............................. 15 Preliminary Advice by Registrar as to Distinctiveness . 16 Request to Registrar for Search..................................... 16 Chapter II: Procedure for Registration of Trade Marks Application Form and Signing of Application.................................. 17 Application under Convention Arrangement ................ 19 Statement of User in Applications ................................ 20 Representation of Mark................................................. 20 Additional Representations ........................................... 20 Representations to be Durable and Satisfactory ............ 21 Series Trade Marks ....................................................... 21 Request for a Search of a Company Name.................... 22 Transliteration and Translation ..................................... 22 YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 2/217 Names and Representations of Living Persons or Persons Recently Dead.................................................. 22 Name or Description of Goods or Services on a Trade Mark.............................................................................. 22 Deficiencies................................................................... 23 Procedure on Receipt of Application for Registration of a Trade Mark Acknowledgement and Search ...................................... 23 Expedited Examination, Objection to Acceptance, Hearing.......................................................................... 23 Notice of Withdrawal of Application for Registration .. 24 Decision of Registrar..................................................... 24 Correction and Amendment of Application .................. 24 Withdrawal of Acceptance by the Registrar.................. 25 Advertisement of Application Manner of Advertisement.............................................. 25 Advertisement of Series ................................................ 26 Notification of Correction or Amendment of Application.................................................................... 26 Request to Registrar for Particulars of Advertisement of a Mark....................................................................... 26 Opposition to Registration Notice of Opposition..................................................... 26 Requirements of Notice of Opposition.......................... 27 Counterstatement .......................................................... 28 Evidence in Support of Opposition ............................... 29 Evidence in Support of Application .............................. 29 Evidence in Reply by Opponent.................................... 29 Further Evidence........................................................... 30 Exhibits ......................................................................... 30 Translation of Documents ............................................. 30 Hearing and Decision.................................................... 30 Security for Costs.......................................................... 31 Notice of Non-Completion of Registration Procedure for Giving Notice ......................................... 31 Registration Entry in the Register ..................................................... 31 Associated Marks.......................................................... 32 Death of Applicant before Registration......................... 32 Certificate of Registration ............................................. 33 Chapter III: Renewal of Registration and Restoration Renewal of Registration................................................ 33 Notice before Removal of Trade Mark from Register... 33 Advertisement of Removal of Trade Mark from the Register ......................................................................... 34 Restoration and Renewal of Registration ...................... 34 Notice and Advertisement of Renewal and Restoration 34 Chapter IV: Assignment and Transmission Application for Entry of Assignment or Transmission.. 35 Particulars to be Stated in Application .......................... 35 Case Accompanying Application.................................. 35 Proof of Title................................................................. 35 Impounding of Instruments ........................................... 35 Assignments Involving Transmission of Moneys Outside India................................................................. 35 Application for Registrar’s Direction as to Advertisement of an Assignment of a Trade Mark without Goodwill of the Business ................................. 36 YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 3/217 Application for Entry of Assignment without Goodwill ....................................................................... 36 Separate Registration .................................................... 36 Registrar’s Certificate or Approval as to Certain Assignment and Transmissions..................................... 37 Entry in Register, of Particulars of Assignment ............ 37 Registration of Assignment to a Company Under Section 46 ..................................................................... 37 Chapter V: Registered Users Application for Registration as Registered User ........... 38 Particulars to be Stated in the Agreement ..................... 39 Consideration by the Registrar ...................................... 39 Hearing before Refusing an Application or to Accept it Conditionally ............................................................. 39 Entry in the Register ..................................................... 40 Registration not to Imply Authorisation to Transmit Money Outside India..................................................... 40 Notification of Registration as Registered User ............ 40 Registered Proprietor’s Application to Vary Entry ....... 40 Cancellation of Registration of Registered User ........... 40 Power of the Registrar to Call for Information with Respect to Registered User ........................................... 41 Procedure on Application to Vary Entry or Cancel Registration ................................................................... 41 Registered User’s Application ...................................... 41 Chapter VI: Rectification and Correction of Register Alteration or Rectification of Register Application to Rectify or Remove a Trade Mark from the Register........................................................... 42 Further Procedure.......................................................... 42 Intervention by Third Parties......................................... 42 Rectification of the Register by the Registrar of his Own Motion .................................................................. 43 Alteration of Address Alteration of Address in Register .................................. 43 Correction of Register Application for Correction of Register.......................... 44 Alteration of Registered Trade Mark ............................ 44 Advertisement before Decision and Opposition etc. ..... 44 Decision, Advertisement, Notification .......................... 45 Re-Classification of Goods in Respect of Existing Registration Re-Classification in Respect of Existing Registration... 45 Chapter VII: Miscellaneous Refusal or Invalidation of Registration of Trade Mark .

Conflicting with a Geographical Indication .................. 46 Single Application under Sub-Section (2) of Section 18 ..................................................................... 47 Divisional Application .................................................. 47 Extension of Time......................................................... 48 Exercise of Discretionary Power of Registrar ............... 48 Notification of Decision................................................ 48 Amendments and Correction of Irregularity in Procedure ...................................................................... 48 Directions not Otherwise Prescribed............................. 49 Opinion of the Registrar under Section 115(4) ............. 49 Hearings Hearings ........................................................................ 49 YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 4/217 Award of Costs by Registrar Costs in Uncontested Cases........................................... 50 Exception to Rule 112................................................... 50 Scale of Costs................................................................ 50 Review of Decision by Registrar Application for Review of Registrar’s Decision ........... 50 Affidavits Form, etc. of Affidavits ................................................. 50 Inspection of Documents by the Public Inspection of Documents............................................... 51 Distribution of Copies of Journal and Other Documents .................................................................... 52 Certificates Certified Copies of Documents ..................................... 52 Certificate for Use in Obtaining Registration Abroad... 52 Power of Registrar to Notify International Non-Proprietary Names ................................................ 53 Appeals to the Intellectual Property Appellate Board Time for Appeal ............................................................ 53 Service to the Registrar ................................................. 53 Certificate of Validity Certificate of Validity to be Noted ................................ 53 Return of Exhibits and Destruction of Records Return of Exhibits ......................................................... 53 Destruction of Records.................................................. 54

PART II: SPECIAL PROVISIONS FOR COLLECTIVE MARKS Rules to Apply to Collective Marks .............................. 54 Application for Registration and Proceedings Relating Thereto .......................................................................... 54 Case Accompanying Application.................................. 55 Examination and Hearing.............................................. 55 Opposition to Registration of Collective Marks............ 55 Amendment of Regulations Relating to Collective Marks and Renewal....................................................... 55 Removal of Collective Mark ......................................... 56

PART III: SPECIAL PROVISIONS FOR CERTIFICATION TRADE MARKS Rules to Apply to Certification Trade Marks ................ 56 Application for Registration and Proceedings Relating Thereto .......................................................................... 56 Statement of Case Accompanying Application............. 57 Hearing by the Registrar before Refusing an Application or to Accept it Conditionally ..................... 57 Opposition to Registration of Certification Trade Mark and Renewal.................................................................. 57 Rectification of Certification Trade Mark..................... 57 Alteration of Deposited Regulations and Consent of the Registrar for Assignment or Transmission of Certification Trade Marks ............................................. 58

PART IV: SPECIAL PROVISION FOR TEXTILE GOODS Definitions .................................................................... 58 Rules to Apply to Textile Marks ................................... 58 Textile Marks ................................................................ 58 Textile Goods................................................................ 58 YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 5/217 Application to Register Letters or Numerals or Any Combination thereof in Respect of Items of Textile Goods............................................................................ 59 Non-Registrability of Certain Marks............................. 60 Marks Likely to Deceive or to Cause Confusion .......... 60

PART V: REGISTRATION OF TRADE MARKS AGENTS Register of Trade Marks Agents ................................... 61 Registration of Existing Registered Trade Marks Agents, Code of Conduct etc......................................... 62 Qualifications for Registration ...................................... 62 Persons Debarred from Registration ............................. 62 Manner of Making Application..................................... 63 Application for Registration as a Trade Marks Agent... 63 Procedure on Application and Qualifying Requirements ................................................................ 63 Certificate of Registration ............................................. 63 Continuance of a Name in the Register of Trade Marks Agents ........................................................................... 63 Removal of Agent’s Name from the Register of Trade Marks Agents...................................................... 64 Power of Registrar to Refuse to Deal with Certain Agents ........................................................................... 64 Restoration of Removed Names.................................... 65 Alteration in the Register of Trade Marks Agents......... 65 Publication of the Register of Trade Marks Agents ...... 65 Appeal ........................................................................... 65

PART VI: PROVISIONS RELATING TO TESTING AND MARKING OF PIECE-GOODS AND YARN Definitions .................................................................... 65 Testing for Length and Width of Piece-Goods.............. 66 Allowances for Peculiarities of Cloth and for Stretching ...................................................................... 66 Testing of Yarns............................................................ 67 Number of Samples to be Selected................................ 67 Further Testing.............................................................. 67 Manner of Selection and Testing of Samples ................ 67 Stove Test...................................................................... 68 Place of Testing............................................................. 68 Security ......................................................................... 68 Stamping of Piece-Goods Cotton Yarn and Under Section 81 Piece-Goods .................................................................. 68 Stamping of Piece-Goods.............................................. 70 Cases Where Requirement as to Stamping May be Waived .......................................................................... 70 Nature of Stamping Required........................................ 70 Languages and Numerals to be Used for Marking ........ 71 Indications of Weight, Length, Name of Manufacturer etc.................................................................................. 71 Manner of Marking Cotton Yarn and Cotton Thread.... 71 Marking of Cover.......................................................... 72 Markings to be Clear and Distinct................................. 72 Manner of Expressing Count of Cotton-Yarn ............... 72 Indication of Other Particulars ...................................... 72 Exemptions ................................................................... 73

PART VII: REPEAL

PART VIII YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 6/217 G.S.R. 114(E) — WHEREAS certain Draft Rules were published in exercise of the powers conferred by sub-section (1) read with section 2 [except clauses (xxix), (xxx, (xxxi),

(xxxiii) thereof] of section 157 of the Trade Marks Act,1999 (47 of 1999) and sections 22 and 24 of the General Clauses Act, 1897 (10 of 1897), vide notification of the Government of India in the Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) vide Number G.S.R. 373 (E) dated the 18th May, 2001 published in Part II section 3, sub-section (i) of the Gazette of India, (Extraordinary), inviting objections and suggestions from all persons likely to be affected thereby before the expiry of thirty days from the date on which copies of the Gazette containing the Notification were made available to the public;

AND WHEREAS the copies of the Gazette containing the said Notification were made available to the public on 11th June, 2001;

AND WHEREAS the objections and suggestions were received from the public have been considered by the Central Government;

NOW, THEREFORE, in exercise of the powers conferred by sub-section (1) and (2) of section 157 of the Trade Marks Act, 1999 (47 of 1999), the Central Government hereby makes the following rules, namely:—

PART I Chapter I Preliminary Short Title and Commencement

1.—(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.

Definition

2.—(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 under section 145 of the Act;

(d) “appropriate office of the Trade Marks Registry” means the relevant office of the Trade Marks Registry as specified in rule 4;

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(e) “class fee” means the fee prescribed for the filing of an application for registration of a trade mark in a particular class;

(f) “convention country” means an application for registration of a trade mark made by virtue of section 154;

(g) “convention application” means an application for the registration of a trade mark made by virtue of Section 154;

(h) “divisional application” means—

(i) an application containing a request for the division of goods or services in a class for the registration of a trade mark; or

(ii) a divided application made by the division of a single application for the registration of a trade mark for separate classes of goods or services;

(i) “divisional fee” means fee prescribed against entry no. 68 in the First Schedule,

(j) “Form” means a form set forth in either the Second or the Third Schedule;

(k) “graphical representation” means the representation of a trade mark for goods or services in paper form;

(l) “journal” means the Trade Marks Journal referred to in rule 43;

(m) “notified date” means the date on which the rules come into force;

(n) “old law” means the Trade and Merchandise Marks Act, 1958 and rules made there under existing immediately before the commencement of the Act;

(o) “opposition” includes an opposition to the registration of a trade mark or a collective mark or a certification trade mark, as the case may be;

(p) “principal place of business in India” means the relevant place in India as specified in rule 3;

(q) “publish” means publish in the Trade Marks Journal;

(r) “registered trade mark agent” means a trade marks agent whose name is actually on the Register of Trade Marks Agents maintained under rule 148;

(s) “renewal” means and includes renewal of a trade mark, certification trade mark or collective mark, as the case may be;

(t) “schedule” means a schedule to the rules;

(u) “section” means a section of the Act;

(v) “specification” means the designation of goods or services in respect of which a trade mark or a registered user of a trade mark is registered or proposed to be registered;

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(w) All other words and expressions used but not defined in these rules but defined in the Act or in the Geographical Indications of Goods (Registration and Protection) Act, 1999 (48 of 1999), the Copyright Act, 1957 (14 of 1957) shall have the meanings assigned to them in those Acts.

(2) In these rules, except as otherwise indicated, a reference to a section is a reference to that section in the Act, a reference to a rule is a reference to that rule in these rules, a reference to a Schedule is a reference to that Schedule to these rules and a reference to a Form is a reference to that Form contained in the Second Schedule or the Third Schedule, as the case may be, to these rules.

Principal Place of Business in India

3. “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 more places than one, the place mentioned by him as the principal place of business in India; and

(iii) where a person does not carry on any business in India but has a place of residence in India, then such place of residence in India.

Appropriate Office of the Trade Marks Registry

4. 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;

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(ii) where there is no entry in the register as to the principal place of business in India of the registered proprietor, the place mentioned in the address for service in India as entered in the register at such date is situate;

(iii) in the case of jointly registered proprietors, the principal place of business in India of the proprietor whose name is entered first in the register as having such place of business in India at such date is situate;

(iv) where none of the jointly registered proprietors is shown in the register as having a principal place of business in India, the place mentioned in the address for service in India of the joint proprietors as entered in the register at such date, is situate;

(v) if no principal place of business in India of the registered proprietor of the mark or in the case of joint registration, of any of the joint proprietors of the mark, is entered in the register, and the register does not contain any address for service in India, the place of the office of the Trade Marks Registry where the application for registration of the trade mark was made, is situate, and

(b) in relation to a trade mark for which an application for registration is pending at the notified date or is made on or after the notified date, the office of the Trade Marks Registry within whose territorial limits—

(i) the principal place of business in India of the applicant as disclosed in the application or, in the case of joint applicants, the principal place of business in India of the applicant whose name is first mentioned in the application, as having such place of business is situate;

(ii) where neither the applicant nor any of the joint applicants, as the case may be, has a principal place of business in India, the place mentioned in the address for service in India as specified in the application is situate.

Jurisdiction of Appropriate Office not Altered by Change in the Principal Place of Business or Address for Service

5. 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.

YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 10/217 Entry of the Appropriate Office in the Register

6. 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.

Transfer of Pending Applications and Proceedings to Appropriate Offices of the Trade Marks Registry

7. 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.

Leaving of Documents, etc.

8.—(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 marks registry in the following matters—

(a) communication and other documents including affidavits in relation to an application filed for registration of a trade mark;

(b) application or request on Forms TM-10, TM-12, TM-13, TM-14, TM-16, TM-17, TM-19, TM-20, TM-21, TM-23, TM-24, TM-25, TM-28, TM-29, TM-30, TM-31, TM-32, TM-33, TM-34, TM-35, TM-36, TM-38, TM-40, TM-46, TM-47, TM-50, TM-54, TM-55, TM-58, TM-59, TM-61 and TM-62.

(c) Notwithstanding anything contained in sub-rule 1 and under clause (a) or clause (b) of sub-rule 2 or sub rule 3 of rule 24, a request for search and issuance of certificate in form TM-60, expedited examination in Form TM-63, or expedited certified copies of documents in Form TM-70, or for expedited search report in Form TM-71 or for expedited search and issuance of a copyright certificate in TM-72 shall be filed at the head Registry until the Registry after informing the public in the Journals directs otherwise.

Documents etc. Filed or Left not at the Appropriate Office

9. 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, YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 11/217 notice, statement or document to the appropriate office if he is satisfied that it was a bona fide error by the applicant:

Provided 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 that any fee paid at the office which is not the appropriate shall be deemed to have been paid at the appropriate office:

Provided also that before declining any such request, the Registrar shall provide the applicant an opportunity of being heard.

Issue of Notices etc.

10. Any 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.

Fees

11.—(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, 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 in the ordinary course of post.

(4) Bank drafts and cheques shall be crossed and made payable to the Registrar at the appropriate office of the Trade Marks Registry and these shall be drawn on a scheduled bank at the place where the appropriate office of the Trade Marks Registry is situate.

(5) Subject to the provisions contained in sub-rule 19 of rule 25,where a fee is payable in respect of filing of a document and where the document is filed without fee or with insufficient fee, such document shall be deemed not to have not been filed for the purposes any proceedings under these rules.

(6) The Registrar may, after informing the public in the Journal make available electronic fee transfer facilities subject to guidelines and instructions as may be specified on that behalf.

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12.—(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 specified as to permit an automated input of the content into a computer, such as by character recognition or scanning.

Size, etc. of Documents

13.—(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 part 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 public in the Journal alter the size, of all applications, notices, statements or other document and forms required under the rules to make it compatible in electronic mode.

(4) The Registrar may after informing the public in the Journal permit the filing of applications, statements, notices or other documents by electronic mode subject to such guidelines and instructions as he may specify in the Journal.

Signing of Documents

14.—(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 director or by the secretary or other principal officer of the body YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 13/217 corporate. The capacity in which an individual signs a document on behalf of a partnership or a body corporate shall be stated below his signature.

(2) Signatures to any documents shall be accompanied by the name of the signatory in Hindi or in capitals letters if signed in English.

Service of Documents

15.—(1) All applications, notices, statements, papers having representations affixed thereto, or other documents 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) Any application or any 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 in the Trade Marks Registry, any person while making any correspondence relating thereto to the Registry shall furnish the following particulars, namely:—

(a) The application number or numbers if any;

(b) The date and place of filing;

(d) An address for communication; and

(e) The concerned agent’s code, if any, and the concerned proprietor’s code if allotted.

(5) The Registrar may after informing the public in the Journal permit transmission of any document by facsimile (fax) of specified documents not requiring payment of a fee.

(6) The Registrar may after informing the public in the Trade Marks Journal accept communications of a routine nature through E-Mail not requiring the payment of a fee thereof.

Particulars of Address etc. of Applicants and Other Persons

16.—(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.

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(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.

Statement of Principal Place of Business in India in an Application

17.—(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 application shall be deemed to be properly addressed.

Address for Service

18.—(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 for 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 his 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.

(2) Any written communication addressed to a person as aforesaid at an address for service in India given by him shall be deemed to be properly addressed.

(3) Unless an address for service in India as required in sub-rule (1) is given, the Registrar shall be under no obligation to send any notice that may be required by the Act or the rules and no subsequent order or decision in the proceedings shall be called in question on the ground of any lack or non-service of notice.

Address for Service in Application and Opposition Proceedings

19. 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 YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 15/217 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.

Non-Availability of an Address for Service

20. 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.

Agency

21.—(1) The authorisation of an agent for the purpose of section 145 shall be executed on 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.

Classification of Goods or Services

22.—(1) For the purposes of the registration of trade marks, goods and services shall be classified in the manner specified in the Fourth Schedule.

(2) The goods and services mentioned in the Fourth Schedule only provide a means by which the general content of numbered international classes can be quickly identified. It corresponds to the major content of each class and are not intended to be exhaustive in accordance with the International Classification of goods and services. For determining the classification of particular goods and services and for full disclosure of the content of international classification, the applicant may refer to the alphabetical index of goods and YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 16/217 services, if any, published by the Registrar under section 8 or the current edition of the International Classification of Goods and Services for the purpose of registration of trade mark published by the World Intellectual Property Organisation or subsequent edition as may be published.

(3) The Registrar shall identify and include in the alphabetical index of classification of goods or services, as far as practicable, goods or services of Indian origin.

Preliminary Advice by Registrar as to Distinctiveness

23.—(1) An application for preliminary advice by the Registrar under sub-section (1) of Section 133 shall be made on Form TM-55 in respect of any goods or services comprised within any one class in the Fourth Schedule, accompanied by three representations of the trade mark.

(2) The advice referred to sub-rule (1) shall ordinarily be given within seven working days of such filing of the application and such advice shall contain the reasons therefor.

Request to Registrar for Search

24.—(1) Any person may request the Registrar, on Form TM-54 to cause a search to be made in respect of a trade mark relating to specified goods or services classified in any one class in the Fourth Schedule to ascertain whether any trade mark is on record which resembles the trade mark in respect of which the request is made. The Registrar shall cause such search to be made and the result thereof communicated ordinarily to the person making the request within thirty working days of the receipt of such request:

Provided, that the Registrar shall cause an expedited search report to be issued ordinarily within seven working days on a request in Form TM-71 on payment of five times the ordinary fees for such search.

(2) If, within three months from the date of communication of the result of the search aforesaid, an application is made for the registration of the trade mark in question and the Registrar takes objection on the ground that the trade mark resembles a trade mark, which was not disclosed in the search but was on record on the last of the dates on which the search was made, the applicant shall be entitled, on giving notice of withdrawal of the application within the period mentioned in rule 39, to have repaid to him any fee paid on the filing of the application.

(3) Any person may request the Registrar, on 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 trade mark 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 certificate will ordinarily be issued within thirty working days of the date of request:

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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 calling of the statement, the request on Form TM-60 shall be treated as abandoned.

(4) The Registrar may cancel the certificate issued under sub-rule (3) after giving notice and stating the grounds on which the Registrar proposes to cancel the certificate and after providing reasonable opportunity of being heard.

(5) Subject to proviso to sub-rule 3 or sub-rule 4 above mentioned, the Registrar shall ordinarily within seven working days issue an expedited certificate under sub-section (1) of section 45 of the Copyright Act, 1957 (14 of 1957) on a request received in Form TM-72 on payment of five times the ordinary fee for such search.

(6) Before abandoning the request in Form TM-60 or TM-72, as the case may be, for non-compliance of the statement of requirements when called for, the Registrar shall offer an opportunity of being heard in the matter.

Chapter II Procedure for Registration of Trade Marks Application Form and Signing of Application

25.—(1) An application to the Registrar for the registration of a trade mark 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 shall be made in Form TM-52

(5) An application to register a textile trade mark(other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule under rule 145 shall be made in Form TM-22.

(6) An application for registration of a textile mark (other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule under rule 145 from a convention country under sub-section (2) of section 154 shall be made in Form TM-45.

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(7)(a) An application under section 63(1) to register a collective trade mark for a specification goods or services in any one class shall be made in Form TM-3.

(b) An application under section 63(1) to register a collective trade mark for a specification of goods or services in any one class from a convention country under sub-section (2) of Section154 shall be made in Form TM-64.

(8)(a) An application under section 71 to register a certification trade mark for a specification of goods or services included in any one class shall be made in Form TM-4.

(b) An application under section 71 to register a certification trade mark for a specification of goods or services in any one class from a convention country under sub-section (2) of Section 154 shall be made in Form TM-65.

(9) A single application for the registration of a trade mark for different classes of goods or services shall be made in Form TM-51.

(10) An application to register a series trade marks under section 15 for a specification of goods or services included in a class or for different classes shall be made in Form TM-8.

(11) An application to register a series trade mark under section 15 for a specification of goods or services included in a class or for different classes from a convention country under sub-section (2) of section 154 shall be made in Form TM-37.

(12) An application for the registration of a trade mark, for goods or services shall—

(a) explain with sufficient precision, a description by words, of the trade mark if necessary, to determine the right of the applicant;

(b) be able to depict the graphical representation of the trade mark;

(d) be considered as a trade mark consisting of a combination of colours only if the application contains a statement to that effect.

(13) An amendment to divide an application under proviso to section 22 shall be made in Form TM-53.

(14) An application, not being a series trade mark shall be in respect of one trade mark only for as many class or classes of goods or services as may be made.

(15) In the case of an application for registration in respect of all the goods or services included in a class or of a large variety of goods or services in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and when it is registered.

(16) The specification of goods or services should not ordinarily exceed five hundred characters for each class. An excess space fee as prescribed in the First Schedule is payable with each application in Form TM-61.

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(17) A single application for the registration of a collective mark-

(a) in different classes shall be made in Form TM-66

(b) in different classes from a convention country shall be made in Form TM-67.

(18) A single application for the registration of certification trade mark—

(a) in different classes shall be made in Form TM-68.

(b) in different classes from a convention country shall be made in Form TM-69.

(19) Where an applicant files a single application for more classes than one and the Registrar determines that the goods or services applied for fall in class or classes in addition to those applied for, the applicant may restrict the specification of goods or services to the class applied for or amend the application to add additional class or classes on payment of the appropriate class fee and the divisional fee. The new class created through a division retains the benefit of the original filing date or in the case of an application from a convention country the convention application date under sub-section (2) of Section 154 provided the claim was otherwise properly asserted in the initial application.

Application under Convention Arrangement

26.—(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, the representation of the mark, and the goods or services covered by the application.

(3) The application shall include a statement indicating the date of filing in the convention application, the name of the convention country where it was filed, the serial number, if any and a statement indicating that priority is claimed.

Provided that where the applicant files more priority claims than one under section 154 for some or all the goods or services in respect of the same trade mark, the Registrar shall also take the date of the earlier application in a convention country, as the priority date:

Provided further that such priority date shall only be in respect of all or some of the goods or services referred to in the earlier convention application.

(4) Where a single application under sub-section (2) of section 18 is filed from a convention country for one or more classes of goods or services, the applicant shall establish a YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 20/217 sufficient ground to the satisfaction of the Registrar for the date of filing of application in all such classes.

Statement of User in Applications

27. An application to register a trade mark shall, 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.

Representation of Mark

28.—(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 (8 cm 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 by 20 centimetres with a margin of 4 centimetres on the left hand side.

Additional Representations

29.—(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 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 time to time 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 a distinctive feature of the mark, the application shall be accompanied with one reproduction of the mark in black and white and four reproductions of the mark in colour.

(3) Where the application contains a statement to the effect that the trade mark is a three dimensional mark, the reproduction of the mark shall consist of a two dimensional graphic or photographic reproduction as follows, namely:—

(i) The reproduction furnished shall consist of three different view of the trade mark;

(ii) Where, however, the Registrar considers that the reproduction of the mark furnished by the applicants does not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish within two months up to five further different views of the mark and a description by words of the mark;

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(iii) Where the Registrar considers the different views and/or description of the mark referred to in clause (ii) still do not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish a specimen of the trade mark.

(4)(i) Where an application for the registration of a trade mark consists of shape of goods or its packaging, the reproduction furnished shall consist of at least five different views of the trade mark and a description by word of the mark.

(ii) If the Registrar considers the different views and description of the mark in sub-clause (i) still does not sufficiently show the particulars of the shape of goods or its packaging, he may call upon the applicant to furnish a specimen of the goods or packaging as the case may be.

Representations to be Durable and Satisfactory

30.—(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 4 centimetres 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 require another representation satisfactory to him to be substituted before proceedings with the application.

(3) Where representation of a trade mark cannot be given in the manner set forth hereinabove, a specimen or copy of the trade mark may be sent either in full size or on a reduced scale and in such form as the Registrar may think most convenient.

Series Trade Marks

31.—(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 section 15 may apply to the Registrar on 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) At any time before the publication of the application in the Journal, the applicant applying under sub-rule (2) may request on Form TM-53, for the division of the application into separate application or applications, as the case may be, in respect of one or more marks in that series and the Registrar shall, if he is satisfied that the division requested conforms with sub-section (3) of section 15, divide the application or applications accordingly.

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(4) The division of an application into one or more applications under sub-rule (3) shall be on the payment of a divisional fee and such class fees as are appropriate.

Request for a Search of a Company Name

32. 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).

Transliteration and Translation

33. 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 in Hindi and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.

Names and Representations of Living Persons or Persons Recently Dead

34. 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.

Name or Description of Goods or Services on a Trade Mark

35.—(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 and other 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.

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36. 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 send 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 shall be treated as abandoned.

PROCEDURE ON RECEIPT OF APPLICATION FOR REGISTRATION OF A TRADE MARK Acknowledgement and Search

37.—(1) Every application for the registration of a trade mark in respect of any goods or services shall on receipt, be acknowledged by the Registrar. The acknowledgement shall be by way of return of one of the additional representations of the trade mark filed by the applicant along with his application, with the official number of the application duly entered thereon.

(2) Upon receipt of the application for registration of trade mark, the Registrar shall cause a search to be made amongst the registered trade marks and amongst the pending applications for the purpose of ascertaining whether there are on record in respect of the same goods or services or similar goods or services any mark identical with or deceptively similar to the mark sought to be registered and the Registrar may cause the search to be renewed at any time before the acceptance of the application but shall not be bound to do so.

Expedited Examination, Objection to Acceptance, Hearing

38.—(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 the 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 that before declining any such request, the Registrar shall provide the applicant an opportunity of being heard.

(4) If, on consideration of an application for registration of a trade mark or on an application for an expedited examination of an application referred to in sub-rule (1) and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 24/217 required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think right to impose under sub-section (4) of section 18, the Registrar shall communicate such objection or proposal in writing to the applicant.

(5) If within one month from the date of communication mentioned in sub-rule (4), the applicant fails to comply with any such proposal or fails to submit his comments regarding any objection or proposal to the Registrar or apply for a hearing or fails to attend the hearing, the application shall be deemed to have been abandoned.

Notice of Withdrawal of Application for Registration

39. 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 communication mentioned in sub-rule (4) of rule 38.

Decision of Registrar

40.—(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 such communication apply on 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 date of the Registrar’s decision for the purpose of appeal.

Correction and Amendment of Application

41. 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 on 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 or substitute a new specification of goods or services not included in the application as filed.

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42.—(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 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, and the application shall proceed as if it had not been accepted.

(3) Where the applicant intimates the Registrar within the period mentioned in sub-rule (2) that he desires to be heard, the Registrar shall give notice to the applicant of a date when he will hear him. Such appointment shall be for a date at least 15 days after the date of the notice, unless the applicant consents to a shorter notice. The applicant may state that he does not desire to be heard and submit such submissions, as he may consider desirable.

(4) The Registrar may, after hearing the applicant, on considering the submissions, if any, of the applicant, pass such orders as he may deem fit.

ADVERTISEMENT OF APPLICATION Manner of Advertisement

43.—(1) Every application for the registration of a trade mark required to be advertised by sub-section (1) of section 20 or to be re-advertised by sub-Section (2) of that section shall be advertised in the Journal ordinarily within six months of the acceptance of an application for registration or after the expiry of the period referred to sub-section (2) of section 154 whichever is later.

(2) Where a trade mark applied is other than a word, the Registrar may call upon the applicant to furnish a camera ready copy of the trade mark ordered to be advertised to scan electronically into a Desk Top publishing package.

(3) The Registrar may after informing the public in the Journal, put the applications published in the Journal on the internet, web site or any other electronic media.

(4) The Registrar may after informing the public in the Journal make available the Journal in CD-ROM on payment of the cost thereof.

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44. 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.

Notification of Correction or Amendment of Application

45. 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.

Request to Registrar for Particulars of Advertisement of a Mark

46. Any person may request the Registrar on Form TM-58 to be informed of the number, and 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.

OPPOSITION TO REGISTRATION Notice of Opposition

47.—(1) A notice of opposition to the registration of a trade mark under sub-section (1) of section 21 shall be given in triplicate on Form TM-5 within three months or within such further period not exceeding one month in the aggregate from the date of the Journal is made available to the public (which date shall be certified by the Registrar as such). The notice shall include a statement of the grounds upon which the opponent objects to the registration.

If the registration is opposed on the ground that the trade marks in question resembles trade marks already on the register, the registration numbers of such trade marks and the dates of the Journals in which they have been advertised shall be set out.

(2) Where a notice of opposition has been filed in respect of a single application for the registration of a trade mark, it shall bear the fee in respect of each class in relation to which the opposition is filed in Form TM-5.

(3) Where an opposition is filed only for a particular class or classes in respect of a single application made under sub-section (2) of section 18, the application for remaining class or classes shall not proceed to registration until a request in Form TM-53 for division of the application together with the divisional fee is made by the applicant.

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(4) Where in respect of a single application for the registration of a trade mark no notice of opposition is filed in a class or classes, the application in respect of such class or classes shall, subject to section 19 and sub-section (1) of section 23, proceed to registration after the division of the application in the class or classes in respect of which an opposition is pending.

(5) All notices of opposition to the registration of a trade mark for goods or services received in respect of a particular journal shall be published in the Journal:

Provided that nothing in this sub-rule shall be construed to presume that all remaining trade marks from a particular journal so notified shall automatically proceed to registration.

(6) An application for an extension of the period within which a notice of opposition to the registration of a trade mark may be given under sub-section (1) of section 21, shall be made on Form TM-44 accompanied by the fee prescribed in First Schedule before the expiry of the period of three months under sub-section (1) of Section 21.

(7) A copy of notice of opposition shall be ordinarily served by the Registrar to the applicants within three months of the receipt of the same by the appropriate office.

Requirements of Notice of Opposition

48.—(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 registration number and the filing date, including the priority date of the earlier mark;

(iii) Where the opposition is based on an earlier mark which is alleged to be a well-known mark within the meaning of sub-section 2 of section 11, an indication to that effect and an indication of the country or countries in which the earlier mark is recognised to be well known;

(iv) where the opposition is based on an earlier trade mark having a reputation within the meaning of paragraph (b) of sub-clause (2) of section 11 of the Act, an indication to that effect and an indication of whether the earlier mark is registered or applied for;

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(v) a representation of the mark of the opponent and where appropriate, a description of the mark or earlier right; and

(vi) Where the goods or services in respect of which earlier mark has been registered or applied for or in respect of which the earlier mark is well known within the meaning of Sub-section (2) of Section 11 or has a reputation within the meaning of that section the opponent shall when indicating all the goods or services for which the earlier mark is protected, also indicate those goods or services on which the opposition is based.

(i) where the opposition is entered by the proprietor of the earlier mark or of the earlier right, his name and address and an indication that he is the proprietor of such mark or right;

(ii) where opposition is entered by a licensee not being a registered user, the name of the licensee and his address and an indication that he has been authorised to enter the opposition;

(iii) where the opposition is entered by the successor in title to the registered proprietor of a trade mark who has not yet been registered as new proprietor, an indication to that effect, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or, where this information is not available, was sent to the appropriate office; and

(iv) where the opposing party has no place of business in India, the name of the opponents and his address for service in India.

(d) The grounds on which the opposition is based.

(2) A notice of opposition shall be verified at the foot by the opponent or by some other person who is acquainted with the facts of the case.

(3) the person verifying shall state specifically by reference to the numbered paragraphs of the notice of opposition, what he verifies of his own knowledge and what he verifies upon information received and believed to be true.

(4) the verification shall be signed by the person making it and shall state the date on which and the place at which it was signed.

Counterstatement

49.—(1) The counterstatement required by sub-section (2) of section 21 shall be sent in triplicate on 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.

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(2) The counterstatement shall be verified in the same manner as the notice of opposition as stated in clause (e)(i) of rule 48.

Evidence in Support of Opposition

50.—(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.

(3) An application for the extension of the period of one month mentioned in sub-rule (1) shall be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein.

Evidence in Support of Application

51.—(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.

(2) An application for the extension of the period of one month mentioned in sub-rule (1) shall be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein.

Evidence in Reply by Opponent

52. 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.

YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 30/217 Further Evidence

53. 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.

Exhibits

54. 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.

Translation of Documents

55. 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.

Hearing and Decision

56.—(1) Upon completion of the evidence if any, the Registrar shall give notice to the parties 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 appear shall so notify the Registrar on 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 attend the hearing in Form TM-7, the application may be treated as abandoned.

(4) If the opponent is not present at the adjourned date of hearing and has not notified his intention to attend the hearing in Form TM-7, the opposition may be dismissed for want of prosecution and the application may proceed to registration subject to Section 19.

(5) In every case of adjournment the Registrar shall fix a day for further hearing of the case and shall make such order as to cost occasioned by the adjournment or such higher costs as the Registrar deems fit.

(6) The fact that the agent or advocate on record of a party is engaged in another court, shall not be a ground for adjournment.

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(7) Where illness of legal practitioner or an agent or his inability to conduct the case for any reason is put forward as a ground for adjournment, the Registrar may refuse to grant the adjournment unless it is satisfied that the legal practitioner or an agent, as the case may be, could not have engaged another agent or legal practitioner in time.

(8) The Registrar shall take on record written arguments if submitted by a party to the proceeding.

(9) The decision of the Registrar shall be notified to the parties in writing.

Security for Costs

57. 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.

NOTICE OF NON-COMPLETION OF REGISTRATION Procedure for Giving Notice

58. The notice which the Registrar is required by sub-section (3) of section 23 to give to an applicant, shall be sent on Form O-1 to the applicant at the address of his principal place of business in India or if he has no principal place of business in India at the address for service in India stated in the application but if the applicant has authorised an agent for the purpose of the application, the notice shall be sent to the agent and a duplicate thereof to the applicant. The notice shall specify twenty-one days time from the date thereof or such further time not exceeding one month as the Registrar may allow on a request made in form TM-56 for completion of the registration.

REGISTRATION Entry in the Register

59.—(1) Where no notice of opposition to an application advertised or re-advertised in the Journal is filed within the period specified in sub-section (1) of section 21, or where an opposition is filed and it is dismissed, the Registrar shall, subject to the provisions of sub-section (1) of section 23 or section 19, enter the trade mark on the register.

(2) The entry of a trade mark in the register shall specify the date of filing of application, the actual date of the registration, the goods or services and the class or classes in respect of which it is registered, and all particulars required by sub-section (1) of section 6 including—

(a) the address of the principal place of business in India, if any, of the proprietor of the trade mark or in the case of a jointly owned trade mark, of such of the joint proprietors of the trade mark as have a principal place of business in India.

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(b) where the proprietor of the trade mark has no place of business in India his address for service in India as entered in the application for registration together with his address in his home country.

(c) in the case of a jointly owned trade mark, where none of the joint proprietors has a principal place of business in India, the address for service in India as given in the application together with the address of each of the joint proprietors in his home country.

(d) the particulars of the trade, business, profession, occupation or other description of the proprietor or, in the case of a jointly owned trade mark, of the joint proprietors of the trade mark as entered in the application for registration.

(e) the particulars affecting the scope of the registration or the rights conferred by the registration,

(f) The convention application date (if any), to be accorded pursuant to an application from applicants of a convention country made under section 154.

(g) where the mark is a collective or certification mark, that fact;

(h) Where the mark is registered pursuant to sub-section 4 of section 11 with the consent of the proprietor of an earlier trade mark or other earlier right, that fact; and.

the appropriate office of the Trade Marks Registry in relation to the trade mark.

(3) The Registrar may from time to time, in consultation with computer experts, formulate guidelines for keeping official records in electronic form.

Associated Marks

60.—(1) Where a trade mark is registered as associated with any other 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.

Death of Applicant before Registration

61. 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.

YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 33/217 Certificate of Registration

62.—(1) The certificate of registration of a trade mark to be issued by the Registrar under sub-section (2) of section 23 shall be on 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 in 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 on Form TM-59 accompanied by the prescribed fee. An unmounted representation of the mark exactly as shown in the form of application for registration thereof at the time of registration shall accompany such request.

Chapter III Renewal of Registration and Restoration Renewal of Registration

63.—(1) An application for the renewal of the registration of a trade mark shall be made on Form TM-12 and 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 must 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 must 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, administrators and the like, when supported by court order or other evidence of authority to act on behalf of the present proprietor.

Notice before Removal of Trade Mark from Register

64.—(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 on 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 on 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.

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(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 registered at any time within six months before the date on which renewal is due, the registration may be renewed by the payment of the renewal fee within six months after the actual date of registration and where the renewal fee is not paid within that period the Registrar shall subject to rule 66, remove the mark from the register.

(3) 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 registered after the date of renewal, the registration may be renewed by the payment of the renewal fee within six months of the actual date of registration and where the renewal fee is not paid within that period the Registrar shall, subject to rule 66, remove the mark from the register.

(4) The renewal of registration of a collective mark or a certification trade mark shall be in Form TM-12 along with the prescribed fee specified in the First Schedule.

Advertisement of Removal of Trade Mark from the Register

65. 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.

Restoration and Renewal of Registration

66. 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.

Notice and Advertisement of Renewal and Restoration

67. 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.

YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 35/217 Chapter IV Assignment and Transmission Application for Entry of Assignment or Transmission

68. An application to register the title of a person who becomes entitled by assignment or transmission to a registered trade mark shall be made on Form TM-24 or TM-23 according as it is made by such person alone or conjointly with the registered proprietor.

Particulars to be Stated in Application

69. An application under rule 68 shall contain full particulars of the instrument, if any, under which the applicant, or, in the case of a joint application, the person other than the registered proprietor claims to be entitled to the trade mark and such instrument or a duly certified copy thereof shall be produced at the Trade Marks Registry for inspection at the time of application. The Registrar may require and retain an attested copy of any instrument produced for inspection in proof of title.

Case Accompanying Application

70. Where a person applying under rule 68 for registration of his title, does not establish his claim under any document or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Registrar otherwise directs, either upon or with the application, state a case setting forth the full particulars of the facts upon which his claim to be proprietor of the trade mark is based, and showing that the trade mark has been assigned or transmitted to him. If the Registrar so requires, the case shall be verified by an affidavit on Form TM-18.

Proof of Title

71. The Registrar may call upon any person who applies to be registered as proprietor of a registered trade mark to furnish such proof or additional proof of title as he may require for his satisfaction.

Impounding of Instruments

72. If in the opinion of the Registrar any instrument produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it in the manner provided by Chapter IV of the Indian Stamp Act, 1899 (2 of 1899).

Assignments Involving Transmission of Moneys Outside India

73. If there is in force any law regulating the transmission of moneys outside India, the Registrar shall not register the title of a person who becomes entitled to a trade mark by an YH Collection of Laws for Electronic Access INDIA IN013EN Marks, Rules, 26/02/2002 page 36/217 assignment which involves such transmission except on production of the permission of the authority specified in such law for such transmission.

Application for Registrar’s Direction as to Advertisement of an Assignment of a Trade Mark without Goodwill of the Business

74.—(1) An application for directions under section 42 shall be made on Form TM-20 and shall state the date on which the assignment was made. The application shall give particulars of the registration in the case of a registered trade mark, and in the case of an unregistered mark shall show the mark and give particulars including user of the unregistered trade mark that has been assigned therewith. The Registrar may call for any evidence or further information and if he is satisfied with regard to the various matters he shall issue directions in writing with respect to the advertisement of the assignment.

(2) The Registrar may refuse to consider such an application in a case to which section 41 applies, unless his approval has been obtained under the said section and a reference identifying the Registrar’s notification of approval is included in the application.

(3) A request for an extension of the period within which the application mentioned in sub-rule (1) shall be made shall be on Form TM-21.

Applicat

The Trade Marks Rules, 2002

The enactment

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