CHAPTER II –
PROCEDURE FOR REGISTRATION OF TRADE MARKS

Application for registration of trade marks

25.)form and signing of application.


1.) An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent.
2.) For a trade mark other than a certification or defensive trade mark, the application shall be made on form TM – 1, if in respect of non-textile goods.

26.) Application to be confined to one class etc.

1.) Every application for the registration of a trade mark shall be in respect of goods comprised in one class only of the Fourth Schedule.
2.) In the case of an application for registration in respect of all the goods included in a class or of a large variety of goods 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.
3.) Applications for the registration of the same trade mark in different classes shall be treated as separate and distinct application, and in all cases where a trade mark is registered under the same official number for goods in more than one class, whether on conversion of the specification under rule 105 or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for all the purposes of the Act.

27.)Statement of user in applications.

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 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.

28.)Representation of mark.

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 provided on the application form for that purpose. Where the representation exceeds such space in size, the representation shall be mounted upon linen, tracing cloth or such other material as the Registrar may consider suitable. Part of the mounting shall be affixed in the space aforesaid and the rest may be folded.

29.) Additional representation.

Every application for the registration of a trade mark shall, except as hereinafter provided, be made in triplicate and shall be accompanied by ten additional representation 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 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 form time to time be required by the Registrar and shall be signed by the applicant or his agent.

30.)Representations to be durable and satisfactory.

1.) All representations of trade marks shall be of a durable nature, and 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 centimeters by 20 centimeters, leaving a margin of not less than 4 centimeters on the left hand part of the sheet.
2.)If the Registrar is dissatisfied with any representation of a mark be may at any time require another representation satisfactory to him to be substituted before proceeding with the application.

31.)Specimens of the mark in exceptional cases.

1.)Where representation of a trade mark cannot be given in the manner set forth in rule 30, a specimen or copy of the trade mark may be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient.
2.) The Registrar may also in exceptional cases deposit in the Trade Marks Registry a specimen or copy of any trade mark which cannot conveniently be shown by a representation and may refer thereto in the register in such manner as the may think fit.

32.) Series of trade marks.

Where an application is made for the registration of a series of 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.

33.)Transliteration and translation.

1.) Where a trade mark contains a word or words in characters other that Devnagari or Roman, there shall, unless the Registrar otherwise directs, be enclosed on the application form and copies thereof and on each of the accompanying representations, a sufficient transliteration and translation to the satisfaction of the Registrar of each of such words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.
2.)Where a trade mark contains a word or words in a language other than Hindi or English, the Registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall be endorsed and signed as aforesaid.

34.)Names and representations of living persons or persons recently dead.

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 mark.

35.)Name or description of goods on a mark.

1.)Where the name or description of any goods appears on a trade mark, the Registrar may refuse to register such mark in respect of any goods other than the goods no named or described.
2.) Where the name or description of any goods appears on a trade mark, which name or description in use varies, the Registrar may permit the registration of the mark for those and other goods on the applicant giving an undertaking that the name or description will be varied when the mark is used upon goods covered by the specification other than the named or described goods. The undertaking so given shall be included in the advertisement of the application in the journal under section 20.

36.)Application under reciprocal arrangements.

Every application claiming priority under section 131 by reason of an application to register the trade mark having been made in a convention country, so declared under sub-section (1) of section 131, which country shall be named, shall state the date of that application and the applicant shall furnish a certificate by the Registrar or other registering authority of that country or shall otherwise verify the application made therein to the satisfaction or the Registrar.


Procedure on receipt of application for registration of a Trade Mark

37.)Acknowledgement of receipt of applications.

Every application for the registration of a trade mark in respect of any goods 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.

38.)Search.

Upon receipt of an application for the registration of a trade mark in respect of any goods the Registrar shall cause a search to be made amongst the registered trade marks and amongst the pending application for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods any marks 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.

39.)Objection to acceptance. Hearing.

1.)    If, on consideration of the application and of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or purposes to accept it subject to such conditions, amendments, disclaimers, modifications or limitations as he may think right to impose, the Registrar shall communicate such objection or proposal in writing to the applicant.
2.)    If within three months from the date of the communication mentioned in sub-rule (1), the applicant does not amend his application according to the proposal aforesaid, or submit his observations to the Registrar or apply for a hearing, the application shall be deemed to have been abandoned.

40.)Notice of withdrawal of application for registration.

A notice of withdrawal of an application for the registration of a trade mark under sub-section (2) of section 103, 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 within three months from the date of the communication mentioned in sub-rule (1) of rule 39.

41.)Decision of Registrar.

1.)    The decision of the Registrar under rule 39 or rule 44 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 one month form 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 issue a statement in writing under sub-rule (1).
3.)    The date when the statement in writing under sub-rule (1) is sent shall be deeded to be the date of Registrar’s decision for the purpose of appeal.

42.)Disclaimer.

The Registrar may require an applicant as a condition of acceptance of his application to agree to such disclaimer as the Registrar may think fit and the disclaimer so agreed to shall be indicated in the advertisement of the application in the journal under sub-section (1) or (2) of section 20 in order that the public generally may understand what the applicant’s rights, if his trade mark is registered, will be.

43.)Correction and amendment of application.

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.

44.)Withdrawal of acceptance by the Registrar.

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 or limitations subject to which the application has been accepted, the Registrar shall communicate such objection in writing to the applicant.
2.)    Unless within two months 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, or considering the submissions, if any, of the applicant, pass such orders as be may deem fit.

45.) Application for registration of a defensive trade mark.

An application for the registration of a defensive trade mark under section 47 shall be made on form TM – 3 and shall be accompanied by a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by an affidavit made by the applicant. The applicant may send, with his affidavit or subsequently, such other evidence as he may desire to furnish, and the Registrar shall consider the whole of the evidence before deciding the application. In all other respects and where they are appropriate and it is not otherwise stated, the rules shall apply to such application as they apply to applications for the registration of ordinary trade marks.


Advertisement of Application

46.)Manner of advertisement.

An application for the registration of a trade mark required of permitted 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 during such times and in such manner as the Registrar may direct. If no representation of the trade mark be included in the advertisement of the application, the Registrar shall mention in such advertisement the place or places where a specimen or representation or the trade mark be inspected.

47.)Fee and Printing block.

For the purposes of advertisement or re-advertisement in the journal as mentioned in rule 46 the applicant shall pay the excess space fee, if any, and may be required to supply a printing block (or more than one, if necessary) of the trade mark satisfactory to the Registrar of such dimensions as may from time to time be approved or directed by the Registrar, or shall supply such information or other means of advertising the trade mark as may be required by the Registrar; and the Registrar, if dissatisfied with the printing block supplied by the applicant or his agent, may require a fresh block before proceeding with the advertisement or readvertisement, as the case may be.

48.) Advertisement of series.

Where an application relates to a series of trade marks differing from one another in respect of the particulars mentioned in sub-section (3) of section 15, the applicant may be required to supply a printing block (or more than one, if necessary) satisfactory to the Registrar of any or each of the trade marks constituting the series; or 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.

49.)Notification of correction or amendment of application.

1.)    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 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 number of the Journal in which it was advertised and the correction or amendment made in the application.
2.)    If the amendment aforesaid involves an amendment of the trade mark, the Registrar may, for the purpose of the notification, call on the applicant to supply a printing block of the mark as amended satisfactory to the Registrar.

50.)Request to Registrar for particulars of Advertisement of a mark.

Any person may request the Registrar on form TM – 58 to be informed of the number, date and page of the Journal in which a trade mark specified in the form was advertised and the Registrar shall furnish such particulars to the person making the request.



Opposition to Registration

51.)Notice of opposition

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 from the date of the advertisement or re-advertisement, as the case may be, of the application for registration in the Journal. 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 mark in question resembles 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.)    An application for an extension of the period within which a notice of opposition to the registration of a trade mark may be given, shall be made on Form TM – 44 accompanied by the prescribed fee. Such period of extension shall not exceed one month in the aggregate.

52.)Counter-statement.

The counter-statement 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 and shall set out what facts, if any, alleged in the notice of opposition, are admitted by the person giving notice of opposition.

53.)Evidence in support of opposition.

1.)    Within two months from the service on him of a copy of the counter-statement by the Registrar, the opponent shall either leave with the Registrar such evidence by way of affidavit as be 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.
2.)    If an opponent takes no action under sub-rule (1) within the time therein prescribed, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition.

54.)Evidence in support of application.

Within two months from the receipt by the applicant of the copies of affidavits in support of the 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 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 counter-statement 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.

55.)Evidence in reply by opponent.

Within one month from the receipt by the opponent of the copies of the applicant’s affidavits, 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.

56.)Further Evidence.

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.

57.)Exhibits

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 impressions 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.

58.)Translation of documents.

Where a document in a language other than Hindi or English is referred to in the notice of opposition, counter-statement or an affidavit filed in an opposition, an attested translation thereof in Hindi or English shall be furnished in duplicate.

59.)Hearing and decision.

1.)    Upon completion of the evidence (if any), the Registrar shall give notice to the parties of a date when he will hear the arguments in the case. Such appointment shall be for a date at least one month after the date of the notice, unless the parties consent to a shorter notice. Within fourteen days from the receipt of the 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 last aforesaid may be treated as not desiring to be heard and the Registrar may act accordingly.
2.)    The decision of the Registrar shall be notified to the parties in writing.

60.)Security for costs.

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

61.)Procedure for giving notice.

The notice which the Registrar is required by sub-section (3) of section 23 of 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 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 as the Registrar may allow, for completion of the registration.


Registration

62.) Entry in the Register.

1.)    As soon as may be after the expiration of three months from the date of the advertisement or re-advertisement, as the case may be, in the Journal of any application for the registration of a trade mark, the Registrar shall, subject to the provisions of sub-section (1) of section 23 enter the trade mark in the register.
2.)    The entry of a trade mark in the register shall specify the date of the registration, the goods 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,
(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 joint proprietors has a principal place of business in India, the address for service in India as given in the applications together with the address of each of the joint proprietors in his home country,
(d)    particulars of the trade, business, profession, occupation or other description of the proprietor or, in the case of a jointly owned trade mark as entered in the application for registration,
(e)    particulars affecting the scope of the registration or the rights conferred by the registration, and
(f)    the appropriate office of the Trade Marks Registry in relation to the trade mark.

63.)Associated marks.

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 (4) of section 16 to dissolve the association as respects any of the trade marks registered as associated trade marks shall be made on Form TM – 14 and shall include a statement of the grounds of the application.

64.)Death of applicant before registration.

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.

65.)Certificate of registration.

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 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 in case a printing block had been furnished for the advertisement of such application.