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1. (1) Short title and commencement. - These rules may be called the Trade Marks Rules, 2001.
   
   (2) They shall come into force on the date on which the Act comes into force.


2. (1) Definitions. - In these rules, unless the context otherwise requires, -

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

   b) "agent" means a person authorised to act under section 145 of the Act;

   c) "application for registration of a trade mark" includes the trade mark for goods or services contained in it;

   d) "appropriate office of the Trade Marks Registry" means the relevant office of the Trade Marks Registry as specified in rule 4;

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

   f) "convention country" means a country notified as such under sub-section (1) of section 154;

   g) "convention application" means an application for registration of a trade mark made by virtue of section 154;

   h) "divisional application" means -

   (i) an application containing a request for the division of goods or services in a class for the registration of a trade mark; or

   i. a divided application made by the division of a single initial application for the registration of a trade mark for separate classes of goods or services;

   i) "divisional fee" means fee prescribed in the First Schedule;

   j) "form" means a form set forth in either the Second or the Third Schedule;

   k) "graphical representation" means the representation of a trade mark for goods or services in paper form;

   l) "Journal" means the Trade Marks Journal referred to in rule 43;

   m) "notified date" means the date on which these- rules come into force;

   n) "old law" means the Trade and Merchandise Marks Act, 1958 and rules made thereunder existing immediately before the commencement of the Act;

   o) "opposition" means an opposition to the registration of a trade mark or a collective mark or a certification trade mark, as the case may be;

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

   q) "publish" means publish in the Trade Marks Journal;

   r) "registered trade mark agent" means a trade marks agent whose name is actually on the register of trade marks agents maintained under rule 148;

   s) "renewal" means and includes renewal of a trade mark or a certification trade mark or collective mark, as the case may be;

   t) "Schedule" means a schedule to these rules;

   u) "section" means a section of the Act;

   v) "specification" means the designation of goods or services in respect of which a trade mark or a registered user of a trade mark is registered or proposed to be registered;

   w) All other words and expressions used but not defined in these rules buts defined in the Act or in the Geographical Indications Goods (Registration and Protection) Act, 1999 (48 of 1999), the Copyright Act, 1957 (14 of 1957) shall have the meanings respectively assigned to them in these Acts.

   (2). In these rules, except as otherwise indicated, a reference to a section is a reference to that section in the Act, a reference to a rule is a reference to that rule in these rules, a reference to a Schedule is a reference to that Schedule to these rules and a reference to a form is a reference to that form contained in the Second Schedule or the Third Schedule, as the case may be to these rules.

3. Principal place of business in India. - Principal place of business in India means -

   (i) where a person carries on business in the goods or services concerned in a trade mark -

   (a) if the business is carried on in India at only one place, that place;
   (b) if the business is carried on in India at more places than one, the place mentioned by him as the principal place of business in India;

   (ii) where a person is not carrying on a business in the goods or services concerned in a trade mark -

   (a) if he is carrying on any other business in India at only one place, that place;
   (b) if he is carrying on any other business in India at more places than one, the place mentioned by him as the principal place of business in India; and

   (iii) where a person does not carry on any business in India but has a place of residence in India, then such place of residence in India.



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

   a) in relation to a trade mark on the Register of Trade Marks at the notified date, the office of the Trade Marks Registry within whose territorial limits -

   (i) the principal place of business in India of the registered proprietor of the trade mark as entered in the register at such date is situate;
   (ii) where there is no entry in the register as to the principal place of business in India of the registered proprietor, the place mentioned in the address for service in India as entered in the register at such date 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 mark or in the case of joint registration, of any of the joint proprietors of the mark, is entered in the register, and the register does not contain any address for service in India, the place of the office of the Trade Marks Registry where the application for registration of the trade mark was made, is situate, and

   b) in relation to a trade mark for which an application for registration is pending at the notified date or is made on or after the notified date, the office of the Trade Marks Registry within whose territorial limits -

   (i) the principal place of business in India of the applicant as disclosed in the application or, in the case of joint applicants, the principal place of business in India of the applicant whose name is first mentioned in the application, as having such place of business is situate;
   (ii) where neither the applicant nor any of the joint applicants, as the case may be, has a principal place of business in India, the place mentioned in the address for service in India as specified in the application is situate.



5. Jurisdiction of appropriate office not altered by change in the principal place of business or address for service. - No change in the principal place of business in India or in the address for service in India, as the case may be,

   (a) of a registered proprietor or of any of the jointly registered proprietors in relation to any trade mark on the register at the notified date, made or effected subsequent to that date or,
   (b) of an applicant for registration or of any of the joint applicants for registration in relation to any trade mark for which an application for registration is either pending at the notified date or is made on or after that date, made or effected subsequent to that date or to the date of filing of such application, as the case may be, shall affect the jurisdiction of the appropriate office of the trade marks registry .



6. Entry of the appropriate office in the register. - In respect of every trade mark on the register at the notified date or registered thereafter the Registrar shall cause to be entered in the register, the appropriate office of the trade marks registry and the Registrar may, at any time, correct any error in the entry so made.


7. Transfer of pending applications and proceedings to appropriate offices of the trade marks registry. - Every application and proceeding pending before the Registrar at the notified date in relation to a trade mark shall be deemed to have been transferred to the appropriate office of the trade marks registry.


8. Leaving of documents, etc; -

   (1) Save as otherwise provided in sub-rule (2), all applications, notices, statements or other documents or any fees authorised or required by the Act or the rules to be made, served, left or sent or paid at or to the trade marks registry in relation to a trade mark on the Register of Trade Marks on the notified date or for which an application for registration is pending on, or is made on or after the notified date, shall be made, served, left or sent or paid to the appropriate office of the trade marks registry.

   (2) documents or fees authorised or required by the Act or the rules to be sent or paid may be sent or paid at or to either the appropriate office or the head office of the registry in the following matters -

   (a) communication and other documents including affidavits in relation to an application filed for registration of a trade mark;
   (b) application or request in Forms TM-10, TM-12, TM-13, TM-14, TM-16, TM-17, TM-19, TM-20, TM-21, TM-23, TM-24, TM-25, TM-28, TM-29, TM-30, TM-31, TM-32, TM-33, TM-34, TM-35, TM-36, TM-38, TM-40, TM-46, TM-47, TM-50, TM-54, TM-55, TM-58, TM-59, TM-61 and TM-62..
   (c) Notwithstanding anything contained in sub-rule 1 and under clause (a) or clause (b) of sub rule 2 or a request for search and issuance of certificate in Form TM-60, expedited examination in Form TM-63, or expedited certified copies of documents in Form TM-70, or for expedited search report in Form TM-71 or for expedited search certificate in Form TM-72 shall be filed at the head registry until the Registrar after informing the public in the Journals directs otherwise.



9. Documents etc. filed or left not at the appropriate office. - Subject to the provisions of rule 8, where an application, notice, statement or other document or any fee authorised or required by the Act or the rules is made, served, left or sent or paid, at or to an office inadvertently which is not the appropriate office of the Trade Marks Registry, the Registrar may on his own or on a request in writing, return such application, notice, statement or document to the appropriate office if he is satisfied that it was a bonafide error on the part of the applicant.
   
   Provided that the period for which such application, notice or statement or document is retained by the office which is not the appropriate office shall be excluded for the purposes of computing the period of limitation where any of such application, notice, statement or document is required to be presented within the prescribed period:
   Provided further that any fee paid at the office which is not the appropriate shall be deemed to have been paid at the appropriate office
   Provided also that before declining any such request, the Registrar shall provide the applicant an opportunity of being heard.



10. Issue of notices etc: - Any notice or communication relating to any application, matter or proceeding under the Act or the rules shall ordinarily be issued by the Head of Office or any other officers authorised by the Registrar.


11. Fees. -

    (1) The fees to be paid in respect of applications, oppositions, registration, renewal, other expedited examination or reports and any other matters under the Act and the rules shall be those specified in the First Schedule, hereinafter referred to as the prescribed fees.
    (2) Where in respect of any matter, a fee is required to be paid under the rules, the form or the application or the request of the petition, therefore, shall be accompanied by the prescribed fee.
    (3) Fees may be paid in cash or sent by money order addressed to the Registrar or by a bank draft issued or by a cheque drawn on a scheduled bank at the place where the appropriate office of the Trade Marks Registry is situated and if sent through post, shall be deemed to have been paid at the time when the money order or the properly addressed bank draft or cheque would be delivered in the ordinary course of post.
    (4) Bank drafts and cheques shall be crossed and made payable to the Registrar at the appropriate office of the Trade Marks Registry and these shall be drawn on a scheduled bank at the place where the appropriate office of the Trade Marks Registry is situate.
    (5) Subject to the provisions contained in sub-rule 19 of rule 25, where a fee is payable in respect of filing of a document and where the document is filed without fee or with insufficient fee, such document shall be deemed not to have been filed for the purposes of any proceedings under these rules.
    (6) The Registrar may, after informing the public in the Journal, make available electronic fee transfer facilities subject to such guideline and instructions as may be specified on that behalf.



12. Forms. -

    (1) The forms set forth in the Second and the Third Schedules shall be used in all cases to which they are applicable and may be modified as directed by the Registrar to meet other cases.
    (2) Any form, when filed at the Trade Marks Registry, shall be accompanied by the prescribed fee.
    (3) A requirement under this rule to use a form as set forth in the Schedules is satisfied by the use either of a replica of that form or of a form which is acceptable to the Registrar and contains the information required by the form as set forth and complies with any direction as to the use of such a form.
    (4) The Registrar may after informing the public in the Journal, specify such forms as are required to be submitted in electronic mode. Thereafter, such forms shall be completed in such a manner as may be specified as to permit an automated input of the content into a computer such as by character recognition or scanning.



13. Size, etc; of documents. -

    (1) Subject to any other directions that may be given by the Registrar, all applications, notices, statements or other documents except trade marks, authorised or required by the Act or the rules to be made, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar shall be neatly handwritten or typewritten or lithographed or printed in Hindi or in English in large and legible characters with deep permanent ink upon strong paper, and except in the case of affidavits, on one side only, and of size of approximately 33 centimetres by 20 centimetres and shall have on the left hand part thereof a margin of not less than 4 centimetres.
    (2) Duplicate documents including copies of trade marks shall be filed at the Trade Marks Registry if at any time required by the Registrar.
    (3) The Registrar may after informing the public in the Journal alter the size, etc; of all applications, notices, statements or other document and forms required under the rules to make it compatible in electronic mode.
    (4) The Registrar may, after informing the public in the Journal, permit the filing of applications, statements, notices or other documents by electronic mode subject to such guidelines and instructions as he may specify in the Journal.



14. Signing of documents. -

    (1) A document purporting to be signed by a partnership firm shall be signed by at least one of the partners stating that he signs on behalf of the firm and a document purporting to be signed by a body corporate shall be signed by a director or by the secretary or other principal officer of the body corporate. The capacity in which an individual signs a document on behalf of a partnership or a body corporate shall be stated below his signature.
    (2) Signatures to any document shall be accompanied by the name of the signatory in Hindi or capital letters, if signed in English.



15. Service of documents. -

    (1)All applications, notices, statements, papers having representations affixed thereto, or other documents authorised or required by the Act or the rules to be made, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar or any other person may be sent through the post by a prepaid letter.

    (2) An application or a document so sent shall be deemed to have been made, served, left or sent at the time when the letter containing the same would be delivered in the ordinary course of post.

    (3) In proving such sending, it shall be sufficient to prove that the letter was properly addressed and put into the post.

    (4) After the filing of an application at the Trade Marks Registry, any person while making any correspondence relating thereto shall furnish the following particulars, namely:-

    (a) the application number or numbers, if any
    (b) the date and place of filing;
    (c) the appropriate class or classes, as the case may be, in relation to which the application is filed;
    (d) an address for communication; and
    (e) the concerned agent's code, if any and the concerned proprietor's code if allotted.
    (5) The Registrar may, after informing the public in the Journal permit, transmission of any document by facsimile (fax) of specified documents not requiring payment of a fee.
    (6) The Registrar may after informing the public in the Journal accept communications of a routine nature through E-mail not requiring the payment of a fee thereof.



16. Particulars of address etc; of applicants and other persons. -

    (1) Names and addresses of the applicants and other persons shall be given in full, together with their nationality, calling and such other particulars as are necessary for identification.
    (2) In the case of a firm, the full name and nationality of every partner thereof shall be stated.
    (3) In the case of an application from a convention country and persons having no principal place of business in India, their addresses in their home country shall be given in addition to their address for service in India.
    (4) In the case of a body corporate or firm, the country of incorporation or the nature of registration, if any, as the case may be, shall be given.



17. Statement of principal place of business in India in an application. -

    (1) Every application for registration of a trade mark shall state the principal place of business in India, if any, of the applicant or in the case of joint applicants, of such of the joint applicants as have a principal place of business in India.
    (2) Subject to the provisions of rules 18, 19 and 21, any written communication addressed to an applicant, or in the case of joint applicants to a joint applicant, in connection with the registration of a trade mark, at the address of his principal place of business in India given by him in the application shall be deemed to be properly addressed.



18. Address for service. -

    (1) An address for service in India shall be given -

    (a) by every applicant for registration of a trade mark who has no principal place of business in India;
    (b) in the case of joint applicants for registration of a trade mark, if none of them has a principal place of business in India;
    (c) by the proprietor of a trade mark who had his principal place of business in India at the date of making the application for registration but has subsequently ceased to have such place;
    (d) by every applicant in any proceeding under the Act or the rules and every person filing a notice of opposition, who does not have a principal place of business in India.
    (e) by every person granted leave to intervene under rule 94.
    (2) Any written communication addressed to a person as aforesaid at an address for service in India given by him shall be deemed to be properly addressed.
    (3) Unless an address for service in India as required in sub-rule (1) is given, the Registrar shall be under no obligation to send any notice that may be required by the Act or the rules and no subsequent order or decision in the proceedings shall be called in question on the ground of any lack or non-service of notice.



19. Address for service in application and opposition proceedings. - An applicant for registration of a trade mark or an opponent filing a notice of opposition may notwithstanding that he has a principal place of business in India, if he so desires, may specifically request in writing, the Registrar with an address in India to which communications in relation to the application or opposition proceedings only may be sent. Such address of the applicant or the opponent shall be deemed, unless subsequently cancelled, to be the actual address of the applicant or the opponent, as the case may be, and all communications and documents in relation to the application or notice of opposition may be served by leaving them at, or sending them by post to such address of the applicant or the opponent, as the case may be.



20. Non-availability of an address for service. - The Registrar may, at any time when a doubt arises as to the continued availability of an address for service in India entered in the register, request the person for whom it is entered, by letter directed to any other address entered in the register or if no such address is entered in the register to the address at which the Registrar considers that the letter would reach him, to confirm the address for service in India and if within two months of making such a request the Registrar receives no such confirmation, he may strike the entry in the register of the address for service in India and require such person to furnish a fresh address for service in India or his address at the principal place of business in India, if he has any at that time.



21. Agency. -

    (1) The authorisation of an agent for the purpose of section 145 shall be executed in Form TM-48 or in such other written form as the Registrar may deem sufficient and proper.
    (2) In the case of such authorisation, service upon the agent of any document relating to the proceeding or matter shall be deemed to be service upon the person so authorising him; all communications directed to be made to such person in respect of the proceeding or matter may be addressed to such agent, and all appearances before Registrar relating thereto may be made by or through such agent.
    (3) In any particular case, the Registrar may require the personal signature or presence of an applicant, opponent, proprietor, registered user or other person.



22. Classification of goods or services. -

    (1) For the purposes of the registration of trade marks, goods and services shall be classified in the manner specified in the Fourth Schedule.
    (2) The goods and services specified in the Fourth Schedule only provide a means by which the general content of numbered international classes can be quickly identified. It corresponds to the major content of each class and are not intended to be exhaustive in accordance with the international classification of goods and services. For determining the classification of particular goods and services and for full disclosure of the content of international classification , the applicant may refer to the alphabetical index of goods and services, if any, published by the Registrar under section 8 or the current edition of the International Classification of Goods and Services for the purpose of registration of trade mark published by the World Intellectual Property Organisation or subsequent edition as may be published.
    (3) The Registrar shall identify and include in the alphabetical index of classification of goods and services, as far as practicable, goods or services of Indian origin.



23. Preliminary advice by Registrar as to distinctiveness. -

    (1) An application for preliminary advice by the Registrar under sub-section (1) of section 133 shall be made in Form TM-55 in respect of any goods or services comprised within any one class in the Fourth Schedule, accompanied by three representations of the trade mark.
    (2) The advice referred to sub-rule (1) shall ordinarily be given within seven working days of such filing of the application and such advice shall contain the reasons therefor.



24. Request to Registrar for search. -

    (1) Any person may request the Registrar, in Form TM-54 to cause a search to be made in respect of a trade mark relating to specified goods or services classified in any one class in the Fourth Schedule to ascertain whether any mark is on record which resembles the trade mark in respect of which the request is made. The Registrar shall cause such search to be made and the result thereof communicated ordinarily to the person making the request within thirty days of the receipt of such request: Provided, that the Registrar shall cause an expedited search report to be issued ordinarily within seven working days on a request in Form TM-71 on payment of five times the ordinary fees for such search.
    (2) If, within three months from the date of communication of the result of the search aforesaid, an application is made for the registration of the trade mark in question and the Registrar takes objection on the ground that the mark resembles a mark, which was not disclosed in the search but was on record on the last of the dates on which the search was made, the applicant shall be entitled, on giving notice of withdrawal of the application within the period mentioned in rule 39, to have repaid to him any fee paid on the filing of the application.
    (3) Any person may request the Registrar, in Form TM-60 to cause a search to be made and for issue of certificate under sub-section (1) of section 45 of Copyright Act, 1957 (14 of 1957) to the effect that no trade mark identical with or deceptively similar to such artistic work, as sought to be registered as copyright under the Copyright Act, 1957 (14 of 1957) has been registered as a trade mark under the Trade Marks Act, 1999(47 of 1999) in the name of, or that no application has been made under that Act for such re-registration by any person other than the applicant. The certificate shall ordinarily be issued within thirty working days of the date of request: Provided, however, the Registrar may call for a statement of requirements from the applicant and if the requirements are not complied within two months from the date of such calling of the statement, the request in Form TM-60 may be treated as abandoned.
    (4) The Registrar may cancel the certificate issued under sub-rule (3) after giving notice and stating the grounds on which the Registrar proposes to cancel the certificate and after providing reasonable opportunity of being heard.
    (5) Subject to proviso to sub-rule 3 or sub-rule 4, the Registrar shall ordinarily within seven working days issue an expedited search certificate under sub-section (1) of section 45 of the Copyright Act, 1957 (14 of 1957) on a request received in Form TM-72 on payment of five times the ordinary fee for such search.
    (6) Before abandoning the request in Form TM-60 or TM-72, as the case may be, for non-compliance of the statement of requirements when called for, the Registrar shall offer an opportunity of being heard in the matter.