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CHAPTER 1 – PRELIMINARY

BananaIP Counsels > The Trade Mark Rules > CHAPTER 1 – PRELIMINARY

CHAPTER 1 – PRELIMINARY

1. Short title and commencement. 

 

(1) These rules may be called the Trade Marks Rules, 2017.

(2) They shall come into force on date of publication in the official Gazette.

 

 

2. Definitions. – 

 

(1) In these rules, unless the context otherwise requires, 

 

(a) “Act” means the Trade Marks Act, 1999 (47 of 1999);

 

(b) “agent” means a person authorised to act as such un der section 145 of the Act;

 

(c) “application for registration of a trademark” inclu des the trademark for goods or services contained in it;

 

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

 

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

 

(f) “convention country” means a country or group of co untries or union of countries or Inter-Governmental organisations of countries declared as such under sub-section (1) of section 154;

 

(g) “convention application” means an application for registration of a trademark 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 entr y no. 14 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 trademark for goods or services represented or capable of being represented in paper form and includes representation in digitised form;

 

(l) “Journal” means the trademarks Journal made available at official website of Controller General of Patents, Designs and Trademarks;

 

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

 

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

 

(o) “opposition” means an opposition to the registration of a trademark or a collective trademark or a certification trademark, as the case may be and includes an opposition to grant of protection to an international registration designating India and opposition to alteration of registered trademark;

 

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

 

(q) “publish” means published in the trademarks Journal made available on the official website of Controller General of Patents, Designs and Trademarks;

 

(r) “registered trademark agent” means a trademark agent whose name is actually on the register of trademarks agents maintained under rule 142;

 

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

 

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

 

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

 

(v) Small Enterprise means:

 

(i)  in case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub- section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006); and

 

(ii) In case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for a medium enterprise under clause (b) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006.

 

Explanation: “enterprise” means an industrial undertakings or a business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods in any manner pertain to any industry specified in the first schedule to the Industries (Development and Regulation) Act, 1951 (65 of 1951) or engages in providing or rendering or any services or services in such an industry.

 

(iii) In case of a foreign enterprise, an enterprise which fulfills the requirements as mentioned in clauses (i) and (ii) above.

 

Explanation: In calculating the investment in the plant and machinery, reference rates of foreign currency of Reserve Bank of India shall prevail.

 

(w) “specification” means the designation of goods or s ervices in respect of which a trademark or a registered user of a trademark is registered or proposed to be registered;

 

(x) “Startup” means

 

(i) an entity in India recognised as a startup by the competent authority under Startup India initiative,

 

(ii) In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation / registration as per Startup India Initiative and submitting declaration to that effect.

 

Explanation: In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail.

 

(y) 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.

 

3. Principal place of business in India.— “Principal place of business in India” means 

 

(i) where a person carries on business in the goods or services concerned in a trademark —

 

(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 trademark—

 

(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.

 

4. Appropriate office of the Trade Marks Registry.—

 

 

The appropriate office of the Trade Marks Registry for the purposes of making an application for registration of a trademark under section 18 or for giving notice of opposition under section 21 or for making an application for removal of a trademark under section 47 or cancelling or varying the registration of a trademark under section 57 or for any other proceedings under the Act and the rules shall be —

 

A. in relation to a trademark 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 trademark as entered in the register at such date is situate;

 

(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 trademark or in the case of joint registration, of any of the joint proprietors of the trademark, 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 trademark was made, is situate, and

 

B. in relation to a trademark 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.

 

 

5. Jurisdiction of appropriate office not altered by change in the principal place of business or address for service.

 

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 trademark 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 trademark 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.

 

6. Entry of the appropriate office in the Register. — 

 

In respect of every trademark 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.

 

7. Transfer of pending applications and proceedings to appropriate offices of the Trade Marks Registry. 

 

Every application and proceeding pending before the Registrar at the notified date in relation to a trademark shall be deemed to have been transferred to the appropriate office of the Trade Marks Registry.

 

8. Leaving of documents, etc.—

 

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 trademark on the Register of trademarks 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:

 

Provided that the Registrar may, by notification in the journal, permit the filing of certain forms or documents, other than the application for the registration of a trademark in any other office of the Trade Marks Registry.

 

9. Issue of notices etc.—

 

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 officer authorised by the Registrar.

 

10. Fees. — 

 

(1) The fees to be paid in respect of applications, oppositions, registration, renewal, expedited processing of application or any other matters under the Act and the rules shall be those as specified in the First Schedule.

 

(2) Where in respect of any matter, a fee is required to be paid under the rules, the form or the application or the request of the petition thereof, it shall be accompanied by the prescribed fee.

 

(3) Fees may be paid electronically or in cash or sent by money order addressed to the Registrar or by a bank draft issued or by a banker’s 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 banker’s cheque is received in the office.

 

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

 

(5) 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 been filed for the purposes of any proceedings under these rules.

11. Forms. — 

 

(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 Schedule shall be satisfied by the use of a replica of that Form containing all 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 or through public notice on official website specify such Forms as are required to be submitted in electronic mode. Thereafter, such Forms shall be completed in such manner as may be laid down by the Registrar so as to permit an automated input of the content into a computer by character recognition or scanning.

 

12. Size, etc of documents.— 

 

(1) Subject to any other directions that may be given by the Registrar, all applications, notices, statements, or other documents except trademarks, authorised or required by the Act or the rules made thereunder, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar shall be typewritten and printed in Hindi or in English in legible characters with deep permanent ink upon strong paper of A-4 or legal size on one side only, and shall have on the left hand side thereof a margin of not less than four centimeters.

 

(2) Duplicate documents including copies of trademark 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 such 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.

 

13. Signing of documents. 

 

(1) Any document required to be signed under the Act and the Rules shall be signed by the applicant or opponent or by a person duly authorised for the purpose.

 

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

 

(3) In case of online filing of the document, the expression ‘Signing’ includes digital signature.

 

14. Service of documents. 

 

(1) All applications, notices, statements, paper s having representations affixed thereto, or other documents authorised or required by the Act or the rules made thereunder, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar or any other person may be delivered by hand or sent through the post by a prepaid letter or may be submitted electronically in the manner as laid down by the Registrar.

 

(2) An 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 shall furnish the following particulars, namely:—

 

(a) the application number or numbers, if any;

 

(b) the date and place of filing;

 

(c) the appropriate class or classes, as the case may be, in relation to which the application is filed;

 

(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 after informing the public in the Journal may accept applications, notices, statements, or other documents online through the gateway provided for this purpose, or in case of documents not requiring the payment of a fee, through e-mail to a designated email address for the purpose.

 

15. Particulars of address etc. of applicants and other persons.— 

 

(1) Names and addresses of the applicants and other persons shall be given in full, together with their nationality, and such other particulars as may be necessary for identification.

 

(2) In the case of a partnership firm, the full name and nationality of every partner thereof shall be given.

 

(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.

 

16. Statement of principal place of business in India in the application. — 

 

(1) Every application for registration of a trademark 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, a principal place of business in India and the same shall be the address of the applicant.

 

(2)Subject to the provisions of rules 17, 18 and 20, 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 trademark, at the address of his principal place of business in India given by him in the application shall be deemed to be properly addressed.

 

17. Address for service.

 

(1) Every applicant or opponent or any person concerned in any proceeding under the Act or rules shall furnish to the Registrar an address for service in India comprising of a postal address in India and a valid e-mail address and such address shall be treated as the address for service of such applicant or opponent or person:

 

Provided that a trademark agent shall also be required to furnish a mobile number registered in India.

 

(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.

 

 

18. Service of Documents by the Registrar. — 

 

(1) All communications and documents in relation to application or opposition matter or registered trademark may be served by the Registrar by leaving them at, or sending them by post to the address for service of the party concerned or by email communication.

 

(2) Any communication or document so sent shall be deemed to have been served, at the time when the letter containing the same would be delivered in the ordinary course of post or at the time of sending the email.

 

(3) To prove such service, it shall be sufficient to prove that the letter was properly addressed and put into the post or the email communication was sent to the email id provided by the party concerned.

 

19. Agency.—

 

(1) The authorisation of an agent for the purpose of section 145 shall be executed in Form TM-M.

 

(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.

 

(4) In case of withdrawal by the agent from the proceedings or from doing any act for which he has been authorised, in respect of an application or opposition wherein no principal place of business in India is mentioned, the applicant or opponent shall, within a period of two months from the date of such withdrawal, provide an address for service in India. If he fails to provide address for service in India within such period, he shall be deemed to have abandoned the application or opposition, as the case may be.

 

(5) In case of revocation of authorisation by the applicant or opponent in respect of an application or opposition wherein no principal place of business in India is mentioned, the applicant or opponent, as the case may be, shall provide the address for service in India within a period of two months from such revocation. If he fails to provide address for service in India within such period, he shall be deemed to have abandoned the application or opposition, as the case may be.

 

20. Classification of goods and service

 

(1) Classification of goods and service for the purpose of registration of trademark, the goods and services shall be classified as per current edition of “the International Classification of goods and services (NICE classification)” published by th e World Intellectual Property Organization (WIPO).

 

(2) The Registrar shall publish a class wise and an alphabetical index of such goods and services, including goods and services of Indian origin.

 

21. Preliminary advice by Registrar as to distinctiveness. 

 

An application for preliminary advice by the Registrar under sub-section (1) of Section 133 shall be made in Form TM-M in respect of any goods or services comprised as published by the Registrar under sub-rule (2) of rule 20, along with the fees specified in entry number 14 of the First Schedule and accompanied by one representation of the trademark.

 

22. Request to Registrar for Search.— 

 

(1) Any person may request the Registrar, in Form TM-C to cause a search to be made and for issue of certificate under sub-section (1) of section 45 of Copyright Act, 1957 (14 of 1957) to the effect that no trademark identical with or deceptively similar to such artistic work, as sought to be registered as copyright under the Copyright Act, 1957 (14 of 1957) has been registered as a trademark 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 shall ordinarily be issued within thirty working days of the date of request:

 

Provided, the Registrar may call for a statement of requirements from the applicant and if the requirements are not complied with within two months from the date of such calling of the statement, the request on Form TM-C shall be treated as abandoned.

 

(2) The Registrar may cancel the certificate issued under sub-rule (1) after giving notice and stating the grounds on which the Registrar proposes to cancel the certificate and after providing reasonable opportunity of being heard.

 

(3) Subject to proviso of sub-rule (1) or sub-rule (2), the Registrar shall ordinarily within seven working days issue an expedited search certificate under sub-section (1) of section 45 of the Copyright Act, 1957 (14 of 1957) on a request received in Form TM-C on payment of fee specified in First Schedule.

 

(4) Before abandoning the request in Form TM-C, as the case may be, for non-compliance of the statement of requirements when called for, the Registrar shall provide an opportunity of being heard in the matter.

 

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