1. Short title and commencement
2. Definitions
3. Principal place of business in India
4. Appropriate office of the Trade Marks Registry
5. Jurisdiction of appropriate office not altered by change in the principal place of business or address for service
6. Entry of the appropriate office in the Register
7. Transfer of pending applications and proceedings to appropriate offices of the Trade Marks Registry
8. Leaving of documents, etc
9. Issue of notices etc
10. Fees
11. Forms
12. Size, etc of documents
13. Signing of documents
14. Service of documents
15. Particulars of address etc
16. Statement of principal place of business in India in the application
17. Address for service
18. Service of Documents by the Registrar
19. Agency
20. Classification of goods and service
21. Preliminary advice by Registrar as to distinctiveness
22. Request to Registrar for Search
23. Form and signing of application
24. Application under convention arrangement
25. Statement of user in applications
26. Representation of trademark
27. Series Trademarks
28. Transliteration and translation
29. Names and representations of living persons or persons recently dead
30. Name or description of goods or services on a trademark
31. Deficiencies
32. Acknowledgement of the Application
33. Examination, Objection to acceptance, hearing
34. Expedited Processing of Application
35. Notice of withdrawal of application for registration
36. Decision of Registrar
37. Correction and amendment of application
38. Withdrawal of acceptance by the Registrar
39. Manner of Advertisement
40. Notification of correction or amendment of application
41. Request to Registrar for particulars of advertisement of a trademark
42. Notice of Opposition
43. Requirements of Notice of Opposition
44. Counterstatement
45. Evidence in support of opposition
46. Evidence in support of application
47. Evidence in reply by opponent
48. Further evidence
49. Translation of documents
50. Hearing and decision
51. Security for costs
52. Procedure for giving notice
53. Entry in the Register
54. Associated trademarks
55. Death of applicant before registration
56. Certificate of registration
57. Renewal of registration
58. Notice before removal of trademark from register
59. Advertisement of removal of trademark from the register
60. Restoration and renewal of registration
61. Notice and advertisement of renewal and restoration
62. Definitions
63. Language
64. Issue of notices or communications etc
65. International application in respect of which India is the country of origin
66. Verification and Certification of international application in respect of which India is the country of origin
67. Handling fee
68. Manner of keeping the record of international registrations where India has been designated
69. Examination of application under section 36E
70. Invalidation of protection
71. Effect of cancellation of international registration
72. Collective and Certification Trademarks
73. Replacement of national registration
74. Subject to provisions of the Act, the provisions of the Madrid Protocol, Common Regulations and Administrative Instructions shall apply in relation to international applications originating from India and international registrations where India has been designated
75. Application for entry of assignment or transmission
76. Case accompanying application
77. Proof of title
78. Impounding of Instruments
79. Assignments involving transmission of moneys outside India
80. Application for Registrar's direction as to advertisement of an assignment of a trademark without goodwill of the business
81. Application for entry of assignment without goodwill
82. Separate registration
83. Registrar's certificate or approval as to certain assignment and transmissions
84. Entry in register, of particulars of assignment
85. Registration of assignment to a company under section 46
86. Application for registration as registered user
87. Consideration by the Registrar
88. Hearing before refusing an application or to accept it conditionally
89. Entry in the register
90. Registration not to imply authorisation to transmit money outside India
91. Communication of registration as registered user
92. Registered proprietor's application to vary entry
93. Cancellation of registration of registered user
94. Power of the Registrar to call for information with respect to registered user
95. Procedure on application to vary entry or cancel registration
96. Registered user's application
97. Application to rectify or remove a trademark from the register
98. Further procedure
99. Intervention by third parties
100. Rectification of the register by the Registrar of his own motion
101. Alteration of address in register
102. Alteration of registered trademark
103. Advertisement before decision and opposition etc
104. Decision, Advertisement, Notification
105. Re-classification in respect of existing registration
106. Refusal or invalidation of registration of a trademark conflicting with a geographical indication
107. Single application under sub-section (2) of section 18
108. Divisional Application
109. Extension of time
110. Exercise of discretionary power of Registrar
111. Communication of decision
112. Amendments and correction of irregularity in procedure
113. Directions not otherwise prescribed
114. Opinion of the Registrar under section 115(4)
115. Hearings
116. Costs in uncontested cases
117. Exception to rule 116
118. Scale of costs
119. Application for review of Registrar's decision
120. Form, etc; of Affidavits
121. Inspection of documents
122. Certified copies of documents
123. Power of Registrar to notify International Non-proprietary names
124. Determination of Well Known Trademark by Registrar
125. Time for appeal
126. Service to the Registrar
127. Certificate of validity to be noted
128. Return of exhibits
129. Destruction of records
130. Rules to apply to collective trademarks
131. Application for registration and proceedings relating thereto
132. Case accompanying application
133. Examination, Hearing, Opposition, Registration, and Renewal
134. Amendment of regulations relating to collective trademarks and renewal
135. Removal of collective trademark
136. Rules to apply to certification Trademarks
137. Application for registration and proceedings relating thereto
138. Statement of case accompanying application
139. Examination, Hearing, Opposition, Registration, and Renewal
140. Cancellation or variation of registration of certification trademark
141. Alteration of deposited regulations and consent of the Registrar for assignment or transmission of certification Trademarks
142. Register of Trademarks Agents
143. Registration of existing registered trademarks agents, code of conduct, etc
144. Qualifications for registration
145. Persons debarred from registration
146. Manner of making application
147. Application for registration as a trademarks agent
148. Procedure on application and qualifying requirements
149. Certificate of registration
150. Continuance of the name in the register of Trade Marks Agents
151. Removal of agent's name from the register of Trade Marks agents
152. Power of Registrar to refuse to deal with certain agents
153. Restoration of removed names
154. Alteration in the register of Trademarks Agents
155. Publication of the register of trademarks agents
156. Appeal
157. Language of the Trade Marks Registry
158. Repeal
PART I
CHAPTER I
PRELIMINARY
(2) They shall come into force on date of publication in the official Gazette.
(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;
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.
Explanation: In calculating the investment in the plant and machinery, reference rates of foreign currency of Reserve Bank of India shall prevail.
Explanation: In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail.
(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.
(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;
(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
(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
(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.
shall affect the jurisdiction of 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.
Provided that a trademark agent shall also be required to furnish a mobile number registered in India.
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.
CHAPTER II
PROCEDURE FOR REGISTRATION OF TRADEMARKS APPLICATION
(a) explain with sufficient precision, a description by words, of the trademark, if necessary, to determine the right of the applicant;
(b) be able to depict the graphical representation of the trademark;
(c) be considered as a three dimensional trademark only if the application contains a statement to that effect;
(d) be considered as a trademark consisting of a combination of colours only if the application contains a statement to that effect.
Provided that while making an application for registration of a trademarks, the names of goods and services stated in the application shall, as far as may be, correspond to those given in the classification of the goods and services published by the registrar under sub-rule (2) of rule 20.
Provided that in case all the goods or services fall in a class other than the class specified, the registrar may permit the correction of class by filing the request on Form TM-M.
Provided that where the applicant files more priority claims than one under section 154 in respect of the same trademark, the Registrar shall take the date of the earlier application in a convention country, as the priority date:
Provided further that such priority date shall not be allowed for the goods and services not covered in the convention application:
Provided also that only a single priority shall be claimed in respect of all the goods or services mentioned in the application for registration of a trademark filed under rule 23(1).
(i) the reproduction furnished shall consist of three different view of the trademark;
(ii) where, the Registrar considers that the reproduction of the trademark furnished by the applicant does not sufficiently show the particulars of the three dimensional trademark, he may call upon the applicant to furnish within two months, up to five further different views of the trademark and a description by words of the trademark;
(iii) where the Registrar considers the different views or description of the trademark referred to in clause (ii), still do not sufficiently show the particulars of the three dimensional trademark, he may call upon the applicant to furnish a specimen of the trademark.
(ii) If the Registrar considers the different views or description of the trademark referred to in clause (i) do 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.
(2) The Registrar may limit the number of applications for expedited processing of trademark applications by publishing the same in the trademarks Journal.
Provided, no such amendment shall be permitted which shall have the effect of substantially altering the trademark applied for or substitute a new specification of goods or services not included in the application as filed.
Advertisement of Application
Provided that in case of any error in the advertisement in respect of the trademark or specification of goods or services except for any trivial spelling mistake or class or statement of use of the trademark or in any other case as the Registrar thinks fit, the Registrar may advertise the trademark again cancelling the earlier advertisement.
Opposition to Registration
Provided that where the applicant has already filed the counter statement on the basis of the copy of notice of opposition made available in the electronic records on the official website, the requirement of service of copy of the notice of opposition to the applicant shall be dispensed with.
(i) the application number against which opposition is entered;
(ii) an indication of the goods or services listed in the trademark application against which opposition is entered; and
(iii) the name of the applicant for the trademark.
(ii) where available, the application number or registration number and the filing date, including the priority date of the earlier trademark;
(iii) where the opposition is based on an earlier trademark which is alleged to be a well-known trademark 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 trademark is recognised to be well known;
(iv) where the opposition is based on an earlier trademark 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 trademark is registered or applied for;
(v) a representation of the trademark of the opponent and where appropriate, a description of the trademark or earlier right; and
(vi) Where the goods or services in respect of which earlier trademark has been registered or applied for or in respect of which the earlier trademark 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 trademark 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 trademark or of the earlier right, his name and address and an indication that he is the proprietor of such trademark 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 trademark 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.
(2) A notice of opposition shall be verified at the foot by the opponent or by his duly authorised agent.
(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.
Provided that no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days.
Notice of Non-Completion of Registration
Registration
Provided that, no such duplicate or copy of certification of registration shall be issued where such request is received after the expiry of time limit for renewal of registration and restoration of registered trademark.
CHAPTER III
RENEWAL OF REGISTRATION AND RESTORATION
(2) Where, in the case of a trademark the registration of which (by reference to the date of application for registration) becomes due for renewal, the trademark 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 60, remove the trademark from the register.
(3) Where, in the case of a trademark the registration of which (by reference to the date of application for registration) becomes due for renewal, the trademark 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 60, remove the trademark from the register.
(4) The renewal of registration of a collective trademark or a certification trademark shall be in Form TM-R along with the prescribed fee as specified in the First Schedule.
Provided that the Registrar shall not remove the trademark from the register if an application for payment of surcharge is made under proviso to sub-section(3) of section 25 in Form TM-R within six months from the expiration of the registration of the trademark.
CHAPTER IV
SPECIAL PROVISIONS RELATING TO PROTECTION OF TRADEMARKS THROUGH THE INTERNATIONAL REGISTRATION UNDER MADRID PROTOCOL
(a) 'Article' means article referred to in Madrid Protocol;
(b) "electronic form" shall have the meaning as is assigned to it in clause (r) of sub-section (1) of section 2 of the Information Technology Act, 2000 (21 of 2000);
(2) Words and expressions used in these rules, in the context of international application or international registration under Chapter IVA of the Act, but not defined shall have the same meaning and respectively assigned to them in the Madrid Protocol or the Common Regulations.
(2) Where the international application complies with the requirements, the Registrar shall so certify in the international application indicating also the date on which the said international application was received; and shall forward the same to the International Bureau within two months from the date of receipt of the said application.
(3) Where the international application does not meet the requirements, the Registrar shall not forward it to the International Bureau, and shall require the applicant by notice to comply with the requirement as specified therein, and shall forward the International Application only after such compliance within the period specified in the notice.
(2) Any entry made in such record shall, to the extent that it applies to India as a designated contracting party, have the same effect as if it had been recorded by the Registrar in the Register of trademarks.
(2) Where, the Registrar finds that the trademark which is the subject of an international registration designating India, cannot be protected, he shall, before the expiry of refusal period applicable under article 5 of the Madrid Protocol, notify to the International Bureau a provisional refusal of protection.
(3) Where there are no grounds for refusal to grant protection, the Registrar shall advertise the particulars concerning international registration under section 20 of the Act in a separate part of the trademarks Journal ordinarily within a period of six months from the date of receipt of advice.
(4) Where an opposition is filed under section 21 of the Act, the Registrar shall, notify that fact to the International Bureau as a provisional refusal based on the opposition in accordance with the Protocol and Common Regulation.
(5) The international registration, on receipt of an opposition thereto, shall be processed in accordance with the provisions contained in rules 42 to 51.
(6) Where the procedure mentioned under sub-rules (1) to (5) have been completed with and the Registrar has decided to confirm such refusal of protection of the trademark for all the goods or services for which the protection has been requested, the Registrar shall send to the International Bureau a statement to that effect.
(7) Where, the provisional refusal has been either totally or partially withdrawn, the Registrar shall send to the International Bureau
(a) a statement to the effect that the provisional refusal is withdrawn and the protection of the trademark is granted for all the goods or services for which the protection has been requested; or
(b) a statement indicating conditions or limitations subject to which, and the goods or services in respect of which the protection is granted.
(8) Where there is no ground to refuse protection, the Registrar shall notify the International Bureau to the effect that protection is granted to the trademark in India.
(9) Where there is further decision affecting the protection of trademark in India, the Registrar shall send further statement to the International Bureau to that effect.
CHAPTER V
ASSIGNMENT AND TRANSMISSION
(2) The Registrar shall dispose of an application made under rule 75 ordinarily within three month from the date of application and intimate the same to the applicant.
(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 in Form TM-P
(a) whether the trademark had been or was used in the business in any of those goods or services, and
(b) whether the assignment was made otherwise than in connection with the goodwill of that business,
and if both those circumstances subsisted, then the applicant shall leave at the Trade Marks Registry a copy of the directions to advertise the assignment, obtained upon application under rule 80, and such proof, including copies of advertisements or otherwise, as the Registrar may require, to show that his directions have been fulfilled and if the Registrar is not satisfied that the directions have been fulfilled, he shall not proceed with the application.
(i) the name and address of the assignee;
(ii) the date of the assignment;
(iii) where the assignment is in respect of any right in the trademark, a description of the right assigned;
(iv) the basis under which the assignment is made; and
(v) the date on which the entry is made in the register.
CHAPTER VI
REGISTERED USER
(2) The registered proprietor and the proposed registered user shall also produce and file such other documents and furnish such other evidence and information as may be required in that behalf by the Registrar.
(3) No application shall be entertained unless the same has been filed within six months from the date of the agreement referred to in clause (a) of sub-section (1) of section 49.
(4) Where more than one application for registration as registered user is made by the same registered proprietor and the same proposed registered user in respect of trademarks covered by the same agreement, the documents mentioned in sub section (1) of section 49 may be filed with any one of the applications and a cross reference to such documents given in the other application or applications.
(2) The entry of a registered user in the register shall state the date on which the application for registration of registered user was made, which date shall be deemed to be the date of registration as registered user of the person mentioned in the entry. The entry shall also state, in addition to the particulars and statements mentioned in paragraphs (i) to (iv) of sub-clause (b) of clause (1) of section 49, the name, description and principal place of business in India of the registered user and if he does not carry on business in India his address for service in India.
(2) In case of the registration of a registered user for a period, in accordance with paragraph (iv) of sub-clause (b) of sub-section (1) of section 49, the Registrar shall cancel the entry of the registered user at the end of that period. Where some or all the goods or services are omitted from those in respect of which a trademark is registered, the Registrar shall at the same time omit them from those specifications of registered users of the trademark in which they are comprised. The Registrar shall notify every cancellation or omission under this sub-rule to the registered users whose permitted use is affected thereby and to the registered proprietor of the trademark.
(2) Any person notified under sub-rule (1) who intends to intervene in the proceedings, shall within one month of the receipt of such notification give notice to the Registrar in Form TM-U to the effect and shall send therewith a statement of the grounds of his intervention. The Registrar shall thereupon serve or cause to be served copies of such notice and statement on the other parties, namely, the applicant, the registered proprietor, the registered user whose registration is the subject matter of the proceeding in question and any other registered user who intervenes.
(3) In the case of any application made under section 50, the applicant and any person notified under sub-rule (1), may, within such time or times as the Registrar may appoint, leave evidence in support of his case, and the Registrar after giving the parties an opportunity of being heard, may accept or refuse the application or accept it subject to any conditions, amendments, modifications or limitations he may think right to impose and shall inform the parties in writing accordingly.
(4) In the case of an application for varying any registration under paragraph (a) of sub-section (1) of section 50 or cancelling any registration on any of the grounds mentioned in items (i) to (iv) of sub-clause (c) of sub-section (1) of section 50, the Registrar shall consider the application together with any notice in Form TM-U and statement of case filed and shall dispose of the application and also inform the parties in writing accordingly.
CHAPTER VII
RECTIFICATION AND CORRECTION OF REGISTER ALTERATION OR RECTIFICATION OF REGISER
Provided that no notice shall be required to be sent to the registered proprietor, in case the registered proprietor has requested or agreed in writing for cancellation of the registration; and thereupon register shall be rectified accordingly.
(2) Unless within the time specified in the notice aforesaid, any person so notified sends to the Registrar a statement in writing setting out fully the facts upon which he relies to meet the grounds stated in the notice or applies for a hearing, he may be treated as not desiring to take part in the proceedings and the Registrar may act accordingly.
(3) If the Registrar decides to rectify the register he shall communicate his decision in writing to the registered proprietor and to each registered user, if any.
Alteration or Correction in Register
(2) A registered proprietor or a registered user of a trademark the address of whose principal place of business in India or whose address for service in India is altered by a public authority, so that the changed address designates the same premises as entered in the register, may make the aforesaid request to the Registrar on Form TM-P or as the case may be, and if he does so he shall leave therewith a certificate of the alteration given by the said authority. If the Registrar is satisfied, as to the facts of the case, he shall alter the register accordingly but shall not require any fees to be paid on the forms, notwithstanding the provisions of sub-rule (2) of rule 10 or sub-rule (2) of rule 11.
(3) (i) Where a registered proprietor makes a request under sub-rule (1) or (2), he shall serve a copy of the request on the registered user or users, if any, and inform the Registrar accordingly.
(ii) where the request aforesaid is made by a registered user, he shall serve a copy thereof on the registered proprietor and every other registered users, if any, and inform the Registrar that he had done so.
(4) In case of the alteration of the address of a person entered in the register as the address for service in India of more than one registered proprietor or registered user of trademarks, the Registrar may, on proof that the said address is the address of the applicant and if satisfied that it is just to do so, accept an application from the person in Form TM-P so as to suit the case, for the appropriate alteration of the entries of his address as the address for service in the several registrations, particulars of which shall be given in the Form and may alter the entries accordingly.
(5) All applications under this rule on Form TM-P shall be signed by the registered proprietor or the registered user, as the case may be, or by an agent authorised by him.
(6) Where an application has been made under sub-section (1) of section 58 for the alteration of the register by correction, change, cancellation or striking out of goods or services or for the entry of a memorandum, the Registrar may require the applicant to furnish such evidence by affidavit or otherwise as the Registrar may think fit, as to the circumstances in which the application is made. Such application shall be made in Form TM-P and a copy thereof shall be served by the applicant on the registered user or users, if any, under the registration of the trademark in question and to any other person who appears from the register to have an interest in the trademark.
(2) Within three months from the date of advertisement under sub-rule (1), any person may give notice of opposition to the application in Form TM-O. A copy of the notice shall be transmitted forthwith by the Registrar to the registered proprietor and each registered user, if any, and within two months from the receipt by the registered proprietor of such copies he shall sent to the Registrar in Form TM-O a counter statement of the grounds on which the opposition is contested. If the registered proprietor sends such a counterstatement, the Registrar shall ordinarily serve a copy thereof on the person giving notice of opposition within one month and the provisions of rules 45 to 51 shall apply mutatis mutandis to the further proceedings on the opposition:
Provided that where the registered proprietor fails to file the counter statement within the specified time, the application shall be deemed to have been abandoned.
(3) If there is no opposition, within the time specified in sub-rule (2), the Registrar shall, after hearing the applicant if he so desires, allow or refuse the application and shall communicate his decision in writing to the applicant.
Re-classification of Goods in Respect of Existing Registration
(2) The Registrar may, thereupon, amend the description of goods and services or the classification as the case may be in accordance with international classification of goods and services (NICE Classification).
(3) The amendment in the specification of goods or services or in the classification if approved shall be advertised in the Journal; thereafter the entry in the register in respect of that registration shall be modified accordingly.
CHAPTER VIII
MISCLLANEOUS
(a) contains or consists of a geographical indication with respect to goods or class or classes of goods not originating in the territory of a country, or a region or locality in that territory which such geographical indication indicates, if the use of such geographical indication in the trademark for such goods, is of such nature as to confuse or mislead the persons as to the true place of origin of such goods or class or classes of goods;
(b) contains or consists of geographical indication identifying goods or class or classes of goods notified under sub-section (2) of section 22 of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (48 of 1999).
(2) Applications filed under sub-section (2) of section 18 when ordered to be advertised shall be published in a separate section of the Journal.
(3) The Registrar shall issue a single certificate of registration in respect of an application made under sub-section (2) of section 18, which has proceeded to registration.
(2) In case of division of application, The Registrar shall treat each divisional application as a separate application for registration with the same filing date as the initial application.
(3) Any time limit for any action by the applicant in relation to the initial application at the time of division shall be applicable to each new separate application created by division irrespective of the date of the division.
(4) In case of division of application, the Registrar shall assign an additional separate new serial number or numbers, as the case may be, and it shall be cross-referenced with the initial application.
(5) For the removal of doubt, it is clarified that no new registration shall be effected when a single application is divided. On the contrary, application already filed shall be merely separated or divided into individual files.
(2) Upon an application made under sub-rule (1) the Registrar, if satisfied that the circumstances are such as to justify the extension of the time applied for, may, subject to the provisions of the rules where a maximum time limit is prescribed and subject to such conditions as he may think fit to impose, extend the time not exceeding one month and communicate the parties accordingly and the extension may be granted though the time for doing the act or taking the proceeding for which it is applied for has already expired.
(2) The Registrar may require the amendment of any application or representation of a trade mark or any other document or the addition of any matter thereto in order to bring it in accordance with the formal requirements of the Act.
(2) The opinion under this rule shall be given by the Registrar or an officer specially authorised for this purpose under sub-section (2) of section 3 and the name of the designated officer shall be published in the journal.
Hearings
Provide that the hearing may also be held through video- conferencing or through any other audio-visual communication devices and in such cases the hearing shall be deemed to have taken place at the appropriate office.
Explanation - For the purposes of this rule, the expression "communication device" has the same meaning as assigned to it in clause (ha) of sub section (ii) of section 2 of the Information Technology Act,2000 (21 of 2000).
(2) Where an officer exercising the powers of the Registrar who has heard any matter under the Act or the rules, has reserved orders therein, is transferred from one office of the Registry to another or reverts to another appointment before passing an order or rendering decision therein, he may, if the Registrar so directs, pass the order or render the decision as if he had continued to be the officer in the office of the Trade Marks Registry where the matter was heard.
Awards of Costs by Registrar
(2) Where an opposition has been filed and the opponent fails to contest the proceedings after the applicant has filed counter statement, the Registrar may impose such costs on the opponent as may be specified in Forth Schedule.
Review of Decisions of the Registrar
Affidavit
(2) Where two or more persons join in an affidavit, each of them shall depose separately to such facts which are within his personal knowledge and those facts shall be stated in separate paragraphs.
(3) Affidavits – (a) In India, before any court or before any officer empowered such to administer oaths or to take affidavits or before the Registrar or before the Notary Public.
(b) In any country or place outside India, before a diplomatic or consular officer, within the meaning of the Diplomatic and Consular Officers (Oaths and Fee) Act, 1948 (41 of 1948), of such country or place or before a notary public or before a Judge or Magistrate, of the country or place.
(4) The person before whom an affidavit is taken shall state the date on which and the place where the same is taken and shall affix his seal, if any, or the seal of the office to which he is attached thereto and sign his name and description at the end thereof.
(5) Alterations and interlineations shall, before an affidavit is sworn or affirmed, be authenticated by the initials of the person before whom the affidavit is taken.
(6) Every affidavit filed before the Registrar in connection with any of the proceedings under the Act or the rules shall be duly stamped under the law for the time being in force.
Inspection of Documents by Public
Certificates
Provided that the Registrar may furnish an expedited certified copies of the documents aforementioned within seven working days on a request in Form TM-M received to that effect on payment fees as specified in First Schedule.
Explanation: A certified copy of any record available digitally with the Registrar shall be a duly certified copy of that record.
Well-Known Trademarks
(2) The Registrar shall, while determining the trademark as well-known take in to account the provisions of sub section (6) to (9) of section 11.
(3) For the purpose of determination, the Registrar may call such documents as he thinks fit.
(4) Before determining a trademark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
(5) In case the trademark is determined as well-known, the same shall be published in the trademark Journal and included in the list of well-known trademarks maintained by the Registrar.
(6) The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.
Appeal to the Intellectual Property Appellate Board
Certificate of Validity
Return of Exhibits and Destruction of Records
(2) Where, before the notified date any exhibits have been produced in any proceeding, the Registrar may, if satisfied that it is no longer necessary to retain them call upon the party concerned to take back the exhibits within a time specified by him and if the party fails to do so, such exhibit shall be destroyed.
PART II
SPECIAL PROVISIONS FOR COLLECTIVE TRADEMARKS
(2) References in Part I of the rules to the acceptance of an application for the registration of a trademark for goods or services, shall, in their application to collective trademark, be substituted by references to authorisation to proceed with the application.
(3) The address in India, if any, of an applicant to register a collective trademark shall be deemed to be the address of his principal place of business in India for all the purposes for which such an address is required by the rules.
(4) The regulations governing collective trademarks shall specify, inter alia—
(a) the name of the association of persons and their respective office addresses;
(b) the object of the association;
(c) the details of members;
(d) the conditions for membership and relation of each member with the group;
(e) the persons authorised to use the trademark and the nature of control the applicant exercise over the use of the collective trademark;
(f) the conditions governing use of the collective trademark, including sanctions;
(g) the procedure for dealing with appeals against the use of the collective trademark;
(h) such other relevant particulars as may be called for by the Registrar.
(b) A collective trademark may be renewed from time to time and the provision of rule 57 to 61 shall apply mutatis mutandis in respect of such request for renewal.
PART III
SPECIAL PROVISION FOR CERTIFICATION TRADEMARKS
(2) References in Part I of the rules to the acceptance of an application for the registration of a trademark, shall, in their application to certification trademark, be substituted by references to authorisation to proceed with the application.
(3) The address in India, if any, of an applicant to register a certification trademark shall be deemed to be the address of his principal place of business in India for all the purposes for which such an address is required by the rules.
(4) The regulation governing a certification trademark shall specify, inter alia—
(a) a description of the applicant;
(b) the nature of the applicant's business;
(c) the particulars of infrastructure like Research and Development, technical manpower support;
(d) the applicant's competence to administer the certification scheme;
(e) the applicant's financial arrangement;
(f) an undertaking from the applicant that there will be no discrimination of any party if they meet the requirements set down in the regulations;
(g) the characteristic, which the trademark will indicate in the certified goods or in relation to the rendering of certified services;
(h) the manner of monitoring the use of the trademark in India; and
(i) such other relevant particulars as may be called for by the Registrar.
(2) An application for the consent of the Registrar to the assignment or transmission of a certification trademark under section 43 shall be made in Form TM-P.
PART IV
REGISTRATION OF TRADEMARKS AGENTS
(2) The Registrar may publish in the Journal a code of conduct for the registered trademarks agent authorising them to act as such.
(i) is a citizen of India,
(ii) is not less than 21 years of age;
(iii) is a graduate of any university in India or possesses an equivalent qualification and has passed the examination prescribed in rule 148 or is an Advocate within the meaning of the Advocates Act, 1961 (25 of 1961) or is a member of the Institute of Company Secretaries of India;
(iv) is considered by the Registrar as a fit and proper person to be registered as a trademark agent.
(i) has been adjudged by a competent Court to be of unsound mind;
(ii) is an undischarged insolvent;
(iii) being a discharged insolvent has not obtained from the court or the appropriate forum as the case may, a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;
(iv) has been convicted by a competent court or the appropriate forum as the case may, whether within or outside India of an offence punishable with transportation or imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Central Government by order in this behalf, has removed the disability;
(v) being a legal practitioner has been held guilty of professional misconduct by any High Court in India;
(vi) being a chartered accountant, has been held guilty of negligence or misconduct by a High Court; or
(vii) being a registered trademarks agent has been held guilty of professional misconduct by the Registrar.
(2) The applicant shall furnish such further information bearing on his application as may be required of him at any time by the Registrar.
(2) The qualifying marks for the examination shall be as advertised by the Registrar.
(a) from whom' a request has been received to that effect; or
(b) from whom the annual fee has not been received on the expiry of three months from the date on which it became due.
(2) The Registrar shall remove from the register of trademarks agents, the name of any registered trademarks agent—
(a) who is found to have been subject at the time of his registration, or thereafter has become subject, to any of the disabilities stated in clauses (i) to(vii) of rule 145;or
(b) whom the Registrar has declared not to be a fit and proper person to remain in the Register by reason of any act of negligence, misconduct or dishonesty committed in his professional capacity;
(c) whose name has been entered in the register by an error or on account of misrepresentation or suppression of material fact:
Provided that before making such declaration under clauses (b) and (c) the Registrar shall call upon the person concerned to show-cause why his registration should not be cancelled and shall make such further enquiry, if any, as may be consider necessary.
(3) The Registrar shall remove from the register of trademarks agents the name of any registered trademarks agent who is dead.
(4) The removal of the name of any person from the register of trademarks agents shall be notified in the Journal and shall, wherever possible, be communicated to the person concerned.
(a) any individual whose name has been removed from, and not restored to the register;
(b) any person, not being registered as a trademarks agent, who in the opinion of the Registrar is engaged wholly or mainly in acting as agent in applying for trademarks in India or elsewhere in the name or for the benefit of the person by whom he is employed;
(c) any company or firm, if any person whom the Registrar could refuse to recognise as agent in respect of any business under these rules, is acting as a director or manager of the company or is a partner in the firm.
(2) The Registrar shall refuse to recognise as agent in respect of any business under this rule any person who neither resides nor has a place of business in India.
(2) The restoration of a name to the register of trademarks agent shall be notified in the Journal and shall be communicated to the person concerned.
(2) Every alteration made in the register of trademarks agents shall be notified in the Journal.
Part V
Language of the Trade Marks Registry
Provided that the parties to a proceedings before the Trade Marks Registry may file documents drawn up in Hindi, if they so desire:
Provided further that that where-
(a) the Registrar permits the use of Hindi in the proceedings of the Tribunal and hearing in such proceedings, he may in his discretion direct English translation of pleadings and documents to be filed;
(b) the Trade Marks Registry located in “Region A” as defined in clause (f) of rule 2 of the Official Languages (Use for Official Purposes of the Union) Rules, 1976, the Registrar may, in his discretion, make final orders either in Hindi or in English.
(2) Notwithstanding anything contained in paragraph (1), where a final order is made in Hindi, an authenticated English translation thereof shall simultaneously be prepared and kept on record.
PART VI
REPEAL
THE FIRST SCHEDULE
(See Rule 11)
FEES
Entry No.
On what payable
Amount in INR.
Corresponding Form Number
For Physical filing
For E-filing
(1)
(2)
(3)
(4)
(5)
1
Application for registration of a trademark /collective Marks / Certification Mark / Series of trademark for specification of goods or services included in one or more than one classes.
TM-A
Where the applicant is an Individual / Startup / Small Enterprise
5,000
4,500
In all other cases
10,000
9,000
(Note: Fee is for each class and for each mark )
2
On a notice of opposition under section 21(1), 64, 66 or 73 or application for rectification of register under section 47 to 57, 68, 77 or application under rule 99, 103, 135,140 or On application under section 25 of Geographical Indication of Goods (Regulations and Protection) Act, 1999 to invalidate a trademark or counter statement related thereto.
(Note: Fee is for each class opposed or counterstatement filed)
3,000
2,700
TM-O
3
For renewal of registration of a trademark under section 25 for each class
TM-R
4
Application for renewal with surcharge of registration of a Trademarks under section 25 (3) for each class
Plus renewal fee applicable under entry 3
5
Application for renewal with surcharge/ restoration and renewal of a Trademarks under section 25 (3), 25 (4) for each class
6
On application under section 45 to register a subsequent proprietor in case of assignment or transfer for each trademark
TM-P
7
On application for:
Certificate of the Registrar under section 40 (2), or
For approval of the Registrar under section 41, or
Direction of the Registrar for advertisement of Assignment without goodwill under section 42, or
Add or alter a registered trademark under section 59 (1) for each trademark, or
Conversion of specification under Section 60 for each trademark.
8
Extension of time for applying for direction under section 42 for advertisement of assignment without goodwill, or
Extension of time for registering a company as subsequent proprietor of trademarks under section 46(4), or
Consent of Registrar to the assignment or transmission of a certification trademark under section 43, or
Change a name and / or description of a registered proprietor or a registered user of a trademark under section 58 for each trademark.
2,000
1,800
9
Dissolution of association between trademarks under section 16(5), or
Change in address or address for service in India of Registered Proprietors under section 58 for each trademark, or
Request for cancellation of an entry in the register or part thereof under section 58 for each trademark.
1,000
900
10
Application under section 49 to a registered user of a registered trademark in respect of goods or services
Or
On application under clause (a) of sub-section (1) of section 50 to vary the entry of a registered user of one trademark where the trademarks are covered by the same registered user in respect of each of them
On application under clause (b), (c) or (d) of sub-section (1) of section 50 for cancellation of entry of a registered user of one trademark
On notice under rule 95 (2) of intention to intervene in one proceeding for the variation or cancellation of entries of a registered user of a trademark
(Note: applicable fee is for each mark)
TM-U
11
Request for search and issue of certificate under rule 22(1)
TM-C
12
Request for an expedited search and issuance of certificate under rule 22 (3)
Not allowed
30,000
13
Extension of time, or
Certified copy, or Duplicate Registration Certificate, or
inspection of document, or
Particulars of advertisement to registrar, or
seeking grounds of decision of Registrar, or
Enter in the register and advertise a note of certificate of validity under rule 127,
Amendment in trademark application, or
Particulars of advertisement of a trademark to Registrar under rule 41.
1000
TM-M
14
Deposition of regulation of collective trademark under section 66 or alteration of regulation of certification trademark under section 74 (2), or
Seeking Registrar preliminary advice, or
For division of an application.
15
Review of Registrar’s decision, or
Petition (not otherwise charged) for obtaining Registrar’s order for any interlocutory matter in a contesting proceeding, or
Any other matters not covered in other TM forms.
16
On request for an expedited certificate of the Registrar (other than a certificate under section 23(2) of the Act) or certified copies of the documents under proviso to rule 122
(Note: for entry in respect of each registered trademark or for each document)
17
On application under rule 34 for expedited process of an application for the registration of a trademark
20,000
40,000
(Note: fee is for each class and for each mark)
18
Request to include a trademark in the list of well- known trademark (Note: applicable fee is for one mark only.)
1,00,000
19
On application for registration of a person as a trademark agent under rule 147 & 149.
TM-G
20
For continuance of the name of a person in the Register of a trademark Agents under rule 150 for every Five year to be paid on or before 1st day of succeeding financial year.
21
On application for restoration of the name of a person to the Register of trademarks agents under rule 153 within 3 years from the date of removal of registration.
Plus continuation fee as mentioned in entry number 20
22
On application for an alteration of any entry in the Register of trademarks Agent under rule 154
23
Handling fee for certification and transmission of international application to International Bureau with MM2(E)
--
THE SECOND SCHEDULE
FORMS
Form
No.
Section and Rules of the Act & Rules
Title for which form may be used
Entry number of first Schedule
Sections 15, 15(3), 18(1), 18(2), 63(1), 71, 71(1), 154(2).
Application for registration of a trademark for specification of goods or services included in one or more than one classes under section 18 (1) or 18 (2), or
Application for registration of collective Marks for specification of goods or services included in one or more than one classes under section 63 (1), or
Application for registration of Certificate Marks for specification of goods or services included in one or more than one classes under section 71 (1), or
Application for registration of trademark as series for specification of goods or services included in one or more than one classes under section 15 (3).
Sections 18(4), 22, proviso to 22, 23(2), 43, 58, 66, 74(2), 127(c), 131, 133(1), 137, 148(2),
Rules: 23, 36, 36(1), 41, 56(3), 108, 109, 122, 124,127.
Request for amendment in trademark application, or
Seeking grounds of decision, or
Application for deposition of regulation of collective trademark, or
Alteration of regulation of certification trademark, or
Request for Certified copy, or
Duplicate Registration Certificate, or
Extension of time,
Request to review of decision to registrar, or
Inspection of document, or
Request to registrar for particulars of advertisement, or
Request to inclusion of a mark in list of well-known trademarks, or
13,14,15,16, 17, 18
Section: 25, Proviso to Section 25(3), 25(4).
Application of Renewal of a Trademarks, or
Request for Renewal with surcharge, or
Request for restoration of a trademark.
3,4,5
rule 22(1), rule 22(3)
Application for Search certificate request
11, 12
Sections 21, 21(1), 47-57, 59, 64, 66, 68, 73, 77 and 25 of Geographical Indication of Goods (Regulation and Protection) Act, 1999
Rules: 99, 105, 130, 136.
On a notice of opposition under section 21(1), 64, 66 or 73,
Application for rectification of register under section 47 to 57, 68, 77,
Application under rule 99, 135, 140, or
Application under section 25 of Geographical Indication of Goods (Regulations and Protection) Act, 1999 to invalidate a trademark or counter statement related thereto.
Sec. 16 (5), 40(2), 41, 42, 43, 45, 58, 59, 60
Rules 75, 80, 83, 85,
Request to replace subsequent proprietor as registered proprietor on register, or
Request to amend the details of registered proprietors or registered users, or
Request to amendment of registered trademarks, or
Request for amendment in specification of goods or services, or
Request for conversion of goods, or
Request for dissolution of association between trademarks.
6, 7, 8, 9
Sections 49, 50, 50(1)(a), 50(1)(b), 50(1)(c) or (d).
Rule: 95.
Application for recordal of registered users, or
Request for amendment in details of registered user, or
Application for cancellation or variation of registered user, or
Application to intervene in the proceedings by third party.
Rules 147, 153, 154.
Application of registration of a Trademark Agent, or
Request for continuation as a Trademark agent, or
Restoration of the Trademark agent name in register, or
Alteration related to details of Trademarks Agents in the register.
19,20,21,22
List of Forms
FORM TM-A
The Trade Marks Act, 1999
Application for registration of a trademark
[The relevant information must be filled up in coloured box against the respective head]
1.
NATURE OF THE APPLICATION:
[(a) The applicant must choose either of the following categories-
1. Standard trademark, 2. Collective Mark, 3. Certification Mark, 4. Series Marks
Standard trademark here means an application for registration of a trademark not being a Collective or Certification trademark or Series of marks
(b) In case of Collective Mark or Certification Mark the draft regulations with form TM-M must be submitted.]
2.
Whether application filed as (Please choose and specify)
In case of startup/ Small Enterprise, requisite certificate should be provided.
(Individual / startup / Small Enterprise/others)
FEE:
(See First Schedule for Appropriate Fee)
3.
APPLICANT
Name: *
Trading as:
Address:*
(State) (Country)
[ This address should be the address of the applicant's principal place of business in India]
Address for service:
[(a) Unless otherwise specifically stated, the applicant's address shall be the address for service of the applicant who has principal place of business in India.
(b) The address for service in India must be provided, in case the applicant does not carry business in India]
Mobile No.:
E-mail address*:
Nature of the applicant:
[The applicant must choose either of the following categories-
1. Individual, 2. Partnership Firm, 3. Body-incorporate including Private Limited/limited Company, 4. Limited Liability Partnership, 5. Society 6. Trust 7. Government Department 8. Statutory Organization. 9. Association of persons 10. Hindu Undivided Family
4.
APPLICANT'S AGENT (if any):
Name*:
Address*:
[In case of authorization of agent, the address of the agent may be mentioned as the applicant's address for service]
Mobile No.* :
Nature of the Agent:
1. Registered Trade Marks Agent, 2. Advocate 3. Constituted Attorney]
Registration No.:
5.
TRADEMARK:
(trademark to be mentioned here)
Category of mark:
1. Word mark (it includes one or more words, letters, numerals or anything written in standard character), 2. Device mark (it includes any label, sticker, monogram, logo or any geometrical figure other than word mark), 3. Colour (when the distinctiveness is claimed in the combination of colours with or without device), 4. Three dimensional trademark (it includes shape or packaging of goods), 4. Sound
Description of the mark:
[(a) Description of mark must be provided in terms of Rule 26.
(b) In case of trademarks submitted in specific combination of colours other than black and white, it shall be presumed that the distinctiveness of the mark is claimed in that combination of colours and application will be considered accordingly.
(c) In case of colour marks the description may be like “The trade mark consists of three vertical stripes in the colours PURPLE, GREEN and YELLOW applied to the fascias of buildings and to doors as shown in the representation of the mark."
(d) In case of sound marks representation of specific musical notes must be submitted at the place provided for the trademark. The applicant is also required to submit sound clipping in MP3]
6.
IF MARK IN A LANGUAGE OTHER THAN HINDI OR ENGLISH:
Language:
Transliteration of the mark in roman script:
[Transliteration of the mark in roman script must be provided in case the mark is in a language other than Hindi or English
Translation of the mark in English:
[Translation of the mark in English must be provided in case the mark is in a language other than Hindi or English
7.
Conditions or Limitations to use the trademark, if any
8.
CLASS OF GOODS OR SERVICE:
DESCRIPTION OF GOODS AND SERVICE:
9.
STATEMENT AS TO USE OF MARK:
[ ] Proposed to be used
[ ] The mark is used by the applicant or its predecessor in title Since…………………………………. in respect of all the goods and/or service mentioned in the application.
[(a) The applicant must select either of the above
(b) The date of use must be given in the format (DD/MM/YYYY) and shall refer to all items mentioned in the application.
(c) In case the use of the Trade Mark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents
(d ) The statement as to use of the mark once made shall be final]
10.
PRIORITY CLAIM, IF ANY:
Priority claimed since
DD/MM/YYYY
Priority claim based on application filed in the Convention Country or organization
Name of the country or organization
Priority Application No.
[The priority must be claimed in respect of all goods and services mentioned in the application]
11.
ANY OTHER IMPORTANT INFORMATION OR STATEMENT:
[Applicant may provide here any other information or statement in relation to his application]
12.
VERIFICATION:
I hereby verify that above mentioned facts are true and correct to best of my knowledge and belief.
13.
DETAIL OF THE PERSON SUBMITTING THE APPLICATION:
Signature:
Name:
Authority:
FORM TM-M
Application/Request for any miscellaneous function in respect of a trademark Application/ Opposition/Rectification
under the Trade Marks Act
This form is divided into three Parts i.e. A, B & C.
Part A and C are required to be filled compulsorily.
Part B is further divided into several subcategories and the same is required to be chosen by the applicant as per requirement and be filled accordingly.
[Note: One form is meant for one request only. Different forms should be submitted for different requests. In case more than one request is claimed in one form the first one will be entertained and rest of the requests will be ignored.]
PART A
[applicants details]
FEE
Applicant or Registered Proprietor/Opponent/Third Party Making the Application/Request
[(a) Anyone from the above, must be chosen on whose behalf the application/request is being submitted.
(b) 'Applicant' or 'Registered Proprietor' here means the person who is recorded as such in TMR records in respect of the referred application or registered trademark. The 'Opponent' here means the Opponent in the referred opposition proceeding or an Applicant for Rectification desiring to cancel or vary the registration of the trademark of someone else. 'Third Party' means the person who is not a party to the application/opposition/Rectification referred to.]
Trading as
[(a) Unless otherwise specifically stated, the applicant's/opponent's/third party’s address shall be the address for service of the applicant who has principal place of business in India.
(b) The address for service in India must be provided, in case the above person does not carry on business in India]
Mobile No :
E-mail address: *
Agent of the applicant or registered proprietor/opponent/third party, as the case may be, (if any)
address
Mobile No:
E-mail address:
Nature of the Agent
[One of the following categories must be chosen -
Registration No.
[In case of authorisation of agent, the address of the agent may be mentioned as the address for service of the Applicant or Registered Proprietor/Opponent/Third Party as the case may be.]
REQUEST/ APPLICATION IN THE MATTER OF
Application / Opposition/ Rectification No
Reference No
[Anyone of the above must be chosen]
Additional Reference, if required
PART B:
PURPOSE OF REQUEST
[application column required to be ticked as filled in]
a
For correction of clerical error or for amendment under rule 37
Details of corrections
b
Statement of grounds of Registrar’s decision under rule 36
Hearing Date
Order No. and date
c
For certificate of the Registrar or certified copy of a document under rule 122
If request is for EXPEDITED certificate
YES or NO
[In case of request for expedited certificate, the fee will be ordinarily five times of normal request]
Details of certified copy required
No of copies of document required
d
For particulars of advertisement of a trade mark under rule 41
e
Request for Review of Registrar’s decision
[Number of associated applications/registered trademark numbers and fee in Rs are to be entered here]
f
Request for extension of time under rule 109
Reason for extension of time period
period of extension of time requested
g
Preliminary Advice about the distinctiveness of the trademark, U/S 133
mark to be entered/pasted here
h
Request of expedited examination of an application under rule 34
Declaration of reason for expedited examination
i
Division of an Application under rule 108
Class to be divided
Trademark(s) (in case of series marks) to be divided
j
Request for duplicate Registration Certificate under rule 56 (3)
k
Request for Inclusion of Trademark in the list of Well- Known Trademarks Registration Certificate under rule 124
Representation of the Mark (paste here)
Fee in Rs.
Is requested mark is registered with Trademark Registry, India – if Yes (details there off
l
Request for the inspection of the document under rule 121
Purpose
Fee in Rs
m
Amendment of regulation for governing the use of a collective trademark or a certification trademarks under section 66
n
A request to enter in the register and advertise a note of certificate of validity, under rule 127
o
On Petition (not otherwise charged) for obtaining Registrar’s order for any interlocutory matter in a contesting proceeding
p
For payment of Misc. fee(s) for other purpose(s) apart from above
q
Regulation for governing the use of a collective trademark or a certification trademarks
Copy of the draft regulation should be attached
r
For submitting Authorization of Agent under rule 19
[The copy of the Power of Attorney must be attached]
PART C
[details of the person making application/request and details of documents submitted]
DETAILS OF THE PERSON SUBMITTING THE APPLICATION
Signature
Name
Authority
LIST OF DOCUMENTS ATTACHED, IF ANY
FORM TM-R
Application for Renewal/Restoration of registration of a trademark
or for payment of surcharge towards the renewal
[The relevant information must be filled up in colored box against the respective head]
[The Applicant here means the person on whose behalf the request is being submitted. He will ordinarily be the registered proprietor of the mark]
As per requirement mentioned in column 6
APPLICANT'S AGENT (if any)
Mobile No* :
Nature of the Agent*
1. Registered Trade Marks Agent 2. Advocate 3. Constituted Attorney]
[In case of authorisation of agent, the address of the agent may be mentioned as the applicant's address for service]
TRADE MARK TYPE:
[(a) one of the following categories must be chosen-
(b) 'Standard mark' here refers to registration of a normal trademark not being Collective or Certification trademarks or Series of marks]
Trade Mark No:
Class(es)
(In case of multiclass number of classes to be mentioned)
Payment for (Select from below)
Renewal before expiry of last registration of trade mark
Renewal if filed within 6 months after expiry of last registration.
Restoration and renewal of registration of the trade mark removed from the register
DETAIL OF THE PERSON SUBMITTING THE APPLICATION
List of Documents attached:
FORM TM-C
Application for Search and certificate under section 45(1) of the Copyright Act, 1957
Name:*
trading as:
Nature of the applicant
1. Natural person-Single Proprietor, 2. Natural person-Partnership Firm, 3. Body-incorporate including Private Limited/limited Company, 4. Limited Liability Partnership, 5. Society 6. Trust 7. Government Department 8. Statutory Organization. 9. any other]
Registration No
[In case of authorisation of agent, the address of the agent may be mentioned as the applicant's address for service
Expedited (Y/N)
space of label/image
DETAILS OF DOCUMENTS ATTACHED
FORM TM-O
Opposition/Application for Rectification of the Register/Counter statement / Refusal or invalidation of a trademark under Geographical Indication of Goods (Regulation and Protection) Act, 1999
[In case of off line filing, the form should be fined in duplicate]
Applicant or Registered Proprietor/Opponent /Third Party Making The Application/Request
[(a) Anyone from the above, must be chosen on whose behalf the Notice/Application/Request is being submitted.
Name*
(b) The address for service in India must be provided, in case the applicant/opponent/third party as the case may be, does not carry on business in India]
AGENT OF THE APPLICANT OR REGISTERED PROPRIETOR/OPPONENT/THIRD PARTY, AS THE CASE MAY BE, (if any)
[In case of authorisation of agent, the address of the agent may be mentioned as the address for service of the applicant/opponent/third party as the case may be]
PURPOSE
This column is divided in three subcategories and the same is required to be chosen by the applicant as per requirement and be filled accordingly.
In the matter of filing opposition/rectification
Application/Registered Trade Mark No.
Trade Mark
Application published in Journal No.
[The copy of the journal publication needs to be attached]
GROUNDS OF OPPOSITION/RECTIFICATION
[Grounds of Opposition/Application for Rectification needs to be drafted in detail and verified by the Opponent/Applicant for Rectification and the same should be attached ]
IN THE MATTER OF (for filing Counter Statement)
Opposition/Rectification No.
Details of Counter statement
[Counter Statement needs to be drafted in detail and verified by the Applicant/Registered Proprietor for Rectification and the same needs to be attached ]
Request to refuse or invalidate a trade mark u/s 25(a) (b) of GI Act, 1999
Application/Registered Trade Mark No
STATEMENT OF CASE
[Statement of Case needs to be drafted in detail and verified by the Applicant; and an affidavit of the applicant in support, needs to be attached.]
FORM TM-P
Application for Post registration changes in the trademarks
[(a) One form is meant for request of one change only. Different forms should be filed up for different changes
(b) The relevant information must be filled up in colored box against the respective head.]
[application details]
[The Applicant here means the person on whose behalf the request is being submitted. He will ordinarily be the registered proprietor of the mark or a person claiming to be subsequent proprietor of the mark by virtue of any assignment or transmission]
Address for service*:
Mobile No*:
REQUEST/ APPLICATION FOR AMENDMENTS IN THE DETAILS OF REGISTRATION OF A TRADEMARK
Registered TM No(s).
[In case of request made for more than one trademarks, the first trademark number should be written.]
Additional Nos., if any:
Reason for amendment:
TYPE OF MARK
Standard mark' here means an application for registration of a normal trademark not being Collective or Certification trademarks or Series of marks]
Request for Amendment In Proprietor / Registered users detail
[single request can be made under one application]
Amendment Requested In
Proprietor Name / Registered user name :
[This block should be used only when there is no change in the proprietorship of the mark by virtue of assignment or transmission]
Address:
Address For Service:
Agent/Attorney Details:
[Any of the above may be chosen and the change requested should be clearly mentioned against relevant column.]
Amendment In the Trademark
Enter or paste proposed trade mark here
Striking Out Goods or Services from the Register
[Change requested should be clearly mentioned here.]
Conversion of Specification of Goods and Services
[change requested should be clearly mentioned here]
Cancellation of the Registration
[Cancellation of the registration requested should be clearly mentioned here.]
Dissolution of the association between a registered trademarks and other trademarks
Registered trademark No(s)
[Enter the trade marks numbers whose association with the referred registered trademark is requested to be dissolved]
Assignment or Transmission of Registered trademark(s)
Assignment
Applicant must mentioned as assignment is with goodwill or without goodwill
Date of assignment deed or the date of transmission
Assignment to different people for different parts of India
Name of proposed assignee
Address of proposed assignee
[(a) Add details of assignees if there are more than one assignees, against relevant row. ]
[(b) Please mention the region specifically with the proposed assignee ]
Certificate of the Registrar under section 40 (2)
Request for the certificate under rule 83
[The details of the request in terms of Section 40(2) must be mentioned here and the statement of case with copy of the assignment must be submitted.]
Approval of the Registrar under section 41
Request for the approval
[The details of the request in terms of Section 41 must be mentioned here and the statement of case with copy of the assignment or transmission must be submitted.]
Application under Section 42 for direction of the Registrar for advertisement of assignment without goodwill of a trademark
Request for the direction
[The details of the request in terms of Section 42 must be mentioned here and the statement of case with copy of the assignment or transmission must be submitted.]
Application for the consent of the registrar to the assignment or transmission of certification trademark
Draft deed of proposed assignment and statement of case be along with affidavit submitted
Application for extension of time under Section 42 for direction of the Registrar for advertisement of assignment without goodwill of a trademark
Application for extension of time
[The details in terms of Section 42 must be mentioned here.]
Application submitted within the period from the date of acquisition or devolution
Not exceeding one month
Not exceeding two month
Not exceeding three month
Application for extension of time under Section 46 (4) for registering a company as subsequent proprietor of a trademark
[The details in terms of Section 46(4) must be mentioned here.]
Application submitted within the period
Not exceeding two months
Not exceeding four months
Not exceeding six month
[Any one of the above should be selected]
[details of the person making application/request and details of document is submitted]
List of documents attached
FORM TM-U
Application for registration of Registered User/Variation of Registered User/Cancellation of Registered
Users and Notice of intention to intervene in proceeding in cancellation/variation
Part B is further divided in several subcategories and the same is required to be chosen by the applicant as per requirement and be filled accordingly.
nature of the referred Registration
Details of Applicants
Name of the Registered Proprietor*:
E-mail address:*
Address for service of the Registered Proprietor:
Name of the proposed Registered User*:
Nature of the proposed user
trading as*:
Address for service of the Proposed Registered user:
Name of the intervener
Applicant's agent (if any)
Registered Proprietor’s Agents
Proposed Registered User’s agent
[The applicant must choose either of the following categories- Registered Trade Marks Agent, 2. Advocate 3. Constituted Attorney]
Registered trademark No(s). in respect of which the request is made
Class(es):
[appropriate column required to be ticked and filled in]
Request For Registration of Registered User
Description of goods and services
Period
From_____________ to ___________________
Condition if any
For variation of the registration of registered user with regard to goods/service or the condition/restriction
Details of variation requested
Cancellation of the registration of registered user
Grounds for cancellation
Statement of ground required to be submitted as attachment with TM-U*
Notice of intention to intervene in proceedings for variation or cancellation in regard to registration of registered user
Ground for intervention in proceeding
DETAIL OF THE Applicant(s)
Details of documents attached
FORM TM-G
Trade Marks Agent Registration/Renewal/Restoration/Alteration
Name in full beginning with surname (in capital letters)*
Father’s /Husband’s Name*
Address of residence*
Principle place of business*
Nationality*
[appropriate column required to be ticked and filled accordingly]
Application for Registration as Trademark Agent
Date of Place of Birth
Occupation in full
Particulars of qualification for registration as a trade mark agent
Whether at any time removed from the Register of Trade Marks Agents and if so the details thereof
Application for continuation/restoration of the name of a person in the Register of Trade Marks Agents
Trade Mark Agent No.
Period for Continuation:
From_________ to ____________
ii
Date of expiration of last registration:
Years after which request for restoration and continuation is filed
Application for alteration in the Register of Trade Marks Agents
Trade Mark Agent No.:
Details to be altered in and as
Address of place of residence
Address of principle place of business
Educational Qualification
THE THIRD SCHEDULE
Forms to be used by the Registrar
LIST OF FORMS
Form No.
Section
Title
RG-1
23(3)
Notice of non-completion of registration
RG-2
23(2)
Certificate of registration of trade mark
RG-3
25(3)
Notice of expiration of last registration.
RG-4
Rule 149
Certificate of registration of a person as a trademarks Agent
FORM RG-1
GOVERNMENT OF INDIA,
TRADE MARKS REGISTRY,
Trade Marks Act, 1999
Notice of non-completion of registration Section 23(3) Rule 52.
Application No ......................
Notice is hereby given as required by section 23(3) of the Trade Marks Act,1999 , that the registration of the trademark, in respect of which application numbered as above was made on the ....................... day of .................... 20 ....................... has not been completed by reason of default on the part of the applicant.
Unless the default is rectified within twenty-one days from the date of this notice, the application will be treated as abandoned.
All communications relating to this application may be sent to the following address in India:-
Dated this............day of ................. 20 ............ Registrar of Trade Marks
To,
_________________
FORM RG-2
Certificate of registration of trademark [section 23(2), rule 56(1)]
Trade Mark No..................
Date.......................
Certified that the trademark, of which a representation appears here, has been registered in the register in the name of ..................in Class(es).............. under No.....................as of the date ....................... in respect of ........................
Sealed at my direction this:. .................day of ..............20............
Registrar of Trade marks.
Registration is for 10 years from the date first above-mentioned and may then be renewed for a period of 10 years, and also at the expiration of each period of 10 years thereafter. (See section 25 of the Trade Marks Act, 1999 and Rules 57 to 61 of the Trade Marks Rules, 2017).
This certificate is not for use in legal proceedings or for obtaining registration abroad.
Note- Upon any change of ownership of this trade mark, or change in address of the principal place of business or address for service in India, application should AT ONCE be made to register the change.
FORM RG-3
Notice of expiration of registration of trademark [section 23(2); rule 58 (1)]
Registered Trade Mark No.................
Class.........................
Notice is hereby given as required in section 25(3) of the Trade Marks Act, 1999 that the registration of the aforesaid trade mark will expire on...................... and that the registration can be renewed for a further period of 10 years on receipt in the Trade Marks Registry of an application on the enclosed Form TM-12 accompanied by the prescribed fee of Rs..................... on or before the said date......................
Dated this................ day of ........................ 20
FORM RG-4
Certificate of registration as Trade Marks Agent (rule 149)
No...........................
This is to certify that.............................................................................................................................
........................................................................ of ......................................................................................
was registered on this ...................................day of ................................... 20 .................. in the Register of Trade Marks Agents maintained under rule 149 of the Trade Marks Rules, 2017.
Registrar of Trade Marks
THE FORTH SCHEDULE
Matter in respect of which costs to be awarded
Amount (In Rupees)
For one day's hearing involving examination of witnesses
For one day's hearing when there is no examination of witnesses
500
For adjournment of hearing granted on the petition of any party
Rs. 1000 plus cost for re- summoning were due to be examined on the day
For striking out scandalous matter from an affidavit.
For not contesting the Opposition proceeding by the applicant if opposition filed after reasonable notice
For not contesting the Opposition proceeding by the opponent after filing of the Counter statement in the opposition proceedings
For attendance of witnesses
Subsistence allowance
Travelling allowance
1000 (see note below)
The fare by rail or steamer for the first class or the second class each way and if there is no rail or steamer communication Rs. 50 or Rs. 20 per km. depending upon the rank and status of the witness.
Note: the rates of subsistence allowance and travelling allowance for witness shall vary according to the status of the witness subject to the maximum prescribed above
Scale costs allowable of in rule 118 proceedings before the Registrar
[F.No. 8/16/2017-IPR-IV]
RAJIV AGGARWAL, Jt. Secy.
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