APPENDIX - 3
THE TRADE
AND MERCHANDISE MARKS RULES, 1959
AS AMENDED BY THE TRADE AND MERCHANDISE MARKS
(AMENDMENT) RULES 1985
TRADE AND MERCHANDISE MARKS RULES, 1959
PART I
CHAPTER 1 –
PRELIMINARY
1.)
Short title and commencement.
(1) These rules may be called the Trade and Merchandise Marks
Rules, 1959.
(2) They shall come into force on the date of which the Act
comes into force.
2.) Definitions.
In these rules, unless the context otherwise requires: -
(a) “Act” means the
Trade and Merchandise Marks Act, 1958
(49 of 1958);
(b) “agent” means
a person authorised under section 123;
(c) “application
for registration of a trade mark” includes the trade mark contained in it;
(d) “appropriate
office of the Trade Marks Registry” means the relevant office of the Trade
Marks Registry as specified in rule 4;
(e) “form” means a form set forth in either the Second or the
Third Schedule;
(f) “journal”
means the Trade Marks Journal;
(g) “notified date”
means the date on which the rules come into force;
(h) “principal place
of business in India” means the relevant place in India as specified in rule
3;
(i) “registered trade
marks agent” means a trade marks
agent whose name is actually on the Register of Trade Marks Agents
maintained under rule 146;
(j) “schedule”
means a schedule to the rules;
(k) “section”
means a section of the Act;
(l) “specification”
means the designation of goods in respect of which a trade mark or a registered
user of a trade mark is registered or proposed to be registered;
(m) all other words and expressions used but not defined in
the rules and defined in the Act shall
have the meanings assigned to them in the
Act.
3.)
Principal place of business in India.
“Principal place of business in India” means –
(i) Where a person carries on business in India. “Principal
place of business in India” means –
(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
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 that 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, 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 trade mark under
section 18 or for giving notice of opposition under
section 21 or for filing an application for rectification under section 46, 47 (4) or 56 or for any
other proceedings under the Act and the
rules shall be –
(a) in relation to a trade mark on the register of Trade Marks
at the notified date, the office of the Trade Marks Registry within whose
territorial limits -
(i) the principal
place of business in India of the registered proprietor of the trade mark as
entered in the register at such date is situate;
(ii) where there is no entry in the register as to the 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 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 his 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 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 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.
6.)Entry
of the appropriate office in the Register.
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.
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 trade
mark shall be deemed to have been transferred to the appropriate office of the
Trade Marks Registry.
8.) Leaving of Documents etc.
(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
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) Excess space fee for advertisement in the Trade Marks
Journal; and
(c) Applications or request on
forms –
TM-12, TM-14, TM-17,
TM-19, TM-21, TM-22, 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-37, TM-38, TM-40,
TM-46, TM-47, TM-50, TM-54,
TM-55, TM-58, TM-59.
9.)Document etc. filed or left not at the appropriate office.
Subject to the provisions of rule 8 where any application, notice,
statements 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 which is not the appropriate office of the
Trade Marks Registry, the Registrar shall return such application, notice,
statement or document or fee to the person concerned.
10.)Issue of notices etc.
Any notice or communication relating to any application, matter or
proceeding under the Act or the rules
shall ordinarily be issued from the
appropriate office of the Trade Marks Registry but may, nevertheless, be
issued from any office of the Trade Marks Registry.
11.) Fees.
(1) The fees to be paid in respect of applications,
oppositions, registration and 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 or the petition, therefor, shall be accompanied by
the prescribed fee.
(3) Fees may be paid in cash or sent by money order addressed
to the Registrar of Trade Marks or by a bank draft issued by, or by a cheque
drawn on and guaranteed by, a scheduled bank as defined in the Reserve Bank of
India Act, 1934 (2 of 1934) or at the discretion
of the Registrar by a cheque drawn on such bank even though not so guaranteed,
and if sent through post shall be deemed to have been paid at the time when the
money order or the properly addressed and prepaid letter containing the postal
order, or bank draft or cheque would be delivered in the ordinary course of
post.
(4) Postal orders shall be crossed and made payable to the
Registrar at the appropriate office of
the Trade Marks Registry and bank drafts and cheques shall also be similarly
crossed and made payable to the Registrar but 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 the filing of a
document, the date on which the entire fee is paid shall be deemed to be the
date of filing of the document.
(6) Where any fee paid by a party is ordered to be returned by
the Registrar under any of the provisions of the
Act or the rules the amount may be refunded by money order in which event
money order commission shall be deductible from such amount.
12.) 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.
13.) 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
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 or the Central Government, shall be
written, typewritten, 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, of a size of approximately 33
centimeters by 20 centimeters and shall have on the left hand part thereof a
margin of not less that 4 centimeters.
(2) Duplicate documents including copies of trade marks shall
be filed at the Trade Marks Registry, if at any time required by the Registrar.
14. Signing of documents.
(1) A document
purporting to be signed by a partnership shall be signed by at least one
of the partners and a document purporting to be signed by a body corporate shall
be signed by a director or by the secretary or other principal officer of the
body 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 if written in charecters other then Roman ,or if
not leigible shall be accompnied by a transliteration in english and in block
capitals.
15. Service of documents.
1.) A document purporting to be signed by a partnership shall
be signed by at
least one of the partners and a document purporting to the signed by a body
corporate shall be signed by a director or by the secretary or other principal
officer of the body 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.) 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.
16.) 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 and addresses of the applicants and other
persons shall be given in full, together with their nationality, calling, and
such other particulars as are necessary for identification.
2.) In the case of a firm the full name and nationality of
every partner thereof shall be stated.
3.) In the case of foreign applicants 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.
17.)Statement of
principal place of business in India
in an application.
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.
18.) Address for service.
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; and
(d) by every applicant in any proceeding under the Act or the rules and every person filing a
notice of opposition, who do not have a principal place of business 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.
19.) Address for service in application and opposition
proceedings.
An applicant for registration of a trade mark or an opponent filing a notice of
opposition may, notwithstanding that he has a principal place of business in
India, if he so desires, furnish 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.
20.) Non-availability of an address for service.
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 three 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.
21.) Agency.
1.) The authorisation of an
agent for the purpose of section
123 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.
22.)
Classification of goods.
For the purposes of the registration or trade marks and of
the rules goods shall be classified in the manner specified in the Fourth Schedule.
23.) Preliminary advice by Registrar as to distinctiveness.
An application for preliminary advice by the Registrar under sub-section (1) of section 103 shall be made on form TM – 55 in respect of any goods
comprised within any class in the Fourth Schedule, accompanied by three
representations of the trade mark.
24.)
Request to Registrar for search.
1.) Any person may request the Registrar, on form TM – 54, to cause a search to be made
in respect of specified goods classified in any one class in the Fourth schedule to ascertain whether any mark
is on record which resembles a trade mark of which three representations
accompany for form. The Registrar shall cause such search to be made and the
result thereof communicated to the person making the request.
2.) If, within three months from the date of the 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 mark resembles a 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 40, 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 the Copyright Act, 1957 (14 of 1957) has been registered
as a trade mark under the Trade and Merchandise Marks
Act, 1958 (43 of 1958) in the name of, or that no application has been made
under that Act for such registration by, any person
other that the applicant.