On August 16, 2024, the Ministry of Commerce and Industry announced the Trade Marks (Holding Inquiry and Appeal) Rules 2024, amending the Trade Marks Rules, 2017. These rules, effective immediately, outline the procedures for filing complaints, holding inquiries, and appealing decisions related to trade marks under the Trade Marks Act, 1999. The rules define key terms and processes, including how complaints should be submitted electronically, how inquiries are to be conducted by adjudicating officers, and the appeal process before the appellate authority. They also stipulate the timeline for proceedings, including a three-month period for completing inquiries and a sixty-day timeframe for appeals. Additionally, the rules mandate that all communications be made electronically and that penalties are to be credited to the Consolidated Fund of India. The detailed procedural forms for complaints, counter-statements, and appeals are included in the new rules to streamline the process and ensure transparency in the adjudication of trade mark disputes.
MINISTRY OF COMMERCE AND INDUSTRY
(Department For Promotion of Industry and Internal Trade)
NOTIFICATION
New Delhi, the 16th August, 2024
G.S.R. 505(E).— WHEREAS the draft of certain rules, further to amend the Trade Marks Rules, 2017 was published on the 10th January, 2024 as required under sub-section (1) of section 157 of the Trade Marks Act, 1999 (47 of 1999), vide notification of the Government of India in the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) number G.S.R. 35(E), dated the 2nd January, 2024 in the Gazette of India, Extraordinary, Part II, section 3, sub-section (i), inviting objections and suggestions from all person likely to be affected thereby before the expiry of a period of thirty days from the date on which copies of the Official Gazette containing the said notification were made available to public;
AND WHEREAS copies of the Official Gazette in which the said notification was published were made available to the public on the 10th January 2024 and subsequently on 1st of July, 2024 for seeking public comments;
AND WHEREAS the objections and suggestions were received from the public in respect of the said draft rules have been considered by the Central Government;
NOW THEREFORE in exercise of the powers conferred by section 157 of the Trade Marks Act,1999 the Central Government hereby makes the following rules, namely: –
HOLDING INQUIRY AND APPEAL
1. Short Title and Commencement. –
(1) These rules may be called the Trade Marks (Holding Inquiry and Appeal) Rules, 2024.
(2) They shall come into force on the date of their publication in the Official Gazette.
2. Definitions. – (1) In the said rules, unless the context otherwise requires, –
(a) “act” means the Trade Marks Act, 1999 (47 of 1999);
(b) “adjudicating officer” means an officer authorised under section 112A of the Act;
(c) “appellant” means a person aggrieved with an order of adjudicating officer and prefers an appeal before the appellate authority under sub-section (1) of section 112B of the Act;
(d) “appellate authority” means an officer authorised under sub-section (1) of section 112B of the Act.
(e) “form” means a form appended to these rules.
(2) words and expressions used in these rules and not defined but defined in the Act, shall have the same meaning respectively assigned to them in the act.
3. Complaint. — Any person may file a complaint in Form-I through electronic means to the adjudicating officer regarding any contravention committed under section 107 of the Act.
4. Holding of inquiry. –
1. For the purposes of adjudication under section 112A of the Act whether any person has committed any contravention as specified in that section, the adjudicating officer shall, issue a notice through electronic means to such person requiring him to show cause within such period as may be specified in the notice (being not less than seven days from the date of service thereof) why an inquiry should not be held against him.
2. Every notice under sub-rule (1) shall indicate the nature of contravention alleged to have been committed.
3. After considering the cause, if any, shown by such person, the adjudicating officer is of the opinion that an inquiry should be held, he shall issue a notice requiring the appearance of that person personally or through a legal practitioner duly authorised by him on such date as may be fixed in the notice.
4. On the date fixed, the adjudicating officer shall explain to the person proceeded against or his legal practitioner, the contravention, committed by such person and the provisions of the Act, in respect of which contravention is alleged to have been committed.
5. The adjudicating officer shall, then, given an opportunity to such person to file his counter statement and produce such documents or evidence under Form-II as he may consider relevant to the inquiry and if necessary, the hearing may be adjourned to a future date and in taking such evidence the adjudicating officer shall not be bound to observe the provisions of the Bhartiya Sakshya Adhiniyam, 2023 (47 of 2023).
6. While holding an inquiry under this rule, the adjudicating officer may require and enforce the attendance of any person acquainted with the facts and circumstances of the case to give evidence or to produce any document which in the opinion of the adjudicating officer may be useful for or relevant to the subject matter of the inquiry.
7. If any person fails, neglects or refuses to appear as required under sub-rule (3) before the adjudicating officer, the adjudicating officer may proceed with the inquiry in the absence of such person after recording the reasons for doing so.
8. If, upon consideration of the evidence produced before the adjudicating officer, the adjudicating officer is satisfied that the person has committed the contravention, he may, by order in writing, impose such penalty under the Act as he considers reasonable.
9. Every order made under sub-rule (8) shall specify the provisions of the Act in respect of which contravention has been committed and shall contain the reasons for imposing the penalty.
10. Every order made under sub-rule (8) shall be dated and signed by the adjudicating officer.
11. A copy of the order made under this rule and all other copies of proceedings shall be supplied free of cost to the person against whom the order is made.
12. The adjudicating officer shall complete the proceeding within three months from the issuance of the notice to the opposite party.
5. Appeal. – (1) Any person aggrieved by an order of the adjudicating officer under this rule, may prefer an appeal in Form III through electronic means to the appellate authority, within sixty days from the date of the order:
Provided that the appellate authority may entertain appeal after the expiry of the said period if he is satisfied that he has sufficient cause for not filling the appeal within such period.
(2) On receipt of the appeal, the appellate authority shall issue a notice requiring to the respondent, to file his reply within such period as may be specified in the notice.
(3) The appellate authority, shall, after giving the parties a reasonable opportunity of being heard, pass a reasoned order, including an order for adjournment, and complete the proceedings ordinarily within sixty days from the date of the receipt of the appeal.
6. Serving upon parties. – (1) All communications under these rules shall be transmitted through electronic means only.
(2) In proving such transmission, it shall be sufficient to show that the communication was properly addressed and transmitted through electronic means.
7. Extension of time. – The adjudicating officer or the appellate authority may, for reasons to be recorded in writing, where there is a reasonable cause for the delay or failure to act, extend any period specified in these rules till such period as he may think fit.
8. Order and penalties. – (1) Every order under these rules, shall be dated, digitally signed, communicated to all the parties, and also uploaded on the official website of Intellectual Property India.
(2) All sums realised by way of penalties under these rules shall be credited to the Consolidated Fund of India”.
THE FIRST SCHEDULE
FORMS
|
“FORM-I THE TRADE MARKS ACT, 1999 |
||
| To,
The Registrar of Trade Marks, The Trade Marks Office, At………………………. |
||
| 1. | Particular of Complainant: – | Particular of Defendant: – |
| a. Name: | a. Name: | |
| b. Address for service: | b. Address for service: | |
| c. Contact No: | c. Contact No: | |
| d. Email (for service): | d. Email (for service): | |
| 2. | Particulars of Complaint: – | |
| a. Date, time and instance of commission of the alleged contravention or default: | ||
| b. Statement of contravention or default setting out all relevant material particulars: | ||
| c. Evidence in support of the statement: | ||
| d. Tentative amount of damage (in pecuniary terms) with cost break-up. | ||
| I/We…………………… , the Complainant herein declare that the facts stated herein are correct to the best or my/our knowledge, information and belief. | ||
| 3. | Signature of the Complainant: | |
| 4. | Name of the natural person who has signed: | |
| Note. – Strike out whichever is not applicable. | ||
–
|
FORM-II |
||
| To,
The Registrar of Trade Marks, The Trade Marks Office, At………………………. |
||
| 1. | A. Name: | I/We,………….
hereby give a counter statement: – to the complaint made in Form-I The grounds in which the counter statement is made are as follows: – |
| b. Address: | ||
| c. Nationality: | ||
| 2. | Complete address including postal index number/code and state along with telephone and fax number(s). | |
| To be signed by the opposite party | ||
| 3. | Signature: | |
| 4. | Name of the natural person who has signed: | |
| Note. – Strike out whichever is not applicable. | ||
–
| FORM-III THE TRADE MARKS ACT, 1999 Appeal [See rule 5] |
|||
| To,
The Registrar of Trade Marks, The Trade Marks Office, At………………………. |
|||
| 1. | Particular of Appellant: – | Particular of Respondent: – | |
| a. Name: | a. Name: | ||
| b. Address for service: | c. Address for service: | ||
| e. Contact No: | c. Contact No: | ||
| d. Email (for service): | d. Email (for service): | ||
| 2. | Statement of Appeal: –
(A statement of case may be separately attached.) |
||
| I/We……………. , the Appellant herein declare that the facts stated herein are correct to the best of my/our knowledge, information and belief. | |||
| 3. | Signature of the Appellant: | ||
| 4. | Name of the natural person who has signed: | ||
| Note. – Strike out whichever is not applicable. | |||
[F. No. P-24027/11/2023-O/o Dir(K)-DPIIT]
HIMANI PANDE, Addl. Secy.
Note: The principal rules were published in the Gazette of India; Extraordinary, Part II, Section 3, Sub-section (i), vide notification number G.S.R. 119 (E), dated 6th day of March 2017.
