The Draft Trade Marks (1st Amendment) Rules, 2024, introduced by the Department for Promotion of Industry and Internal Trade under the Ministry of Commerce and Industry, represent a strategic modification to the Trade Marks Rules, 2017. This regulatory endeavor is conducted under the delegated powers provided for in Section 157[1] of the Trade Marks Act, 1999 (“the Act”). These rules create a unified adjudication process which is carefully planned to ensure consistency. This effectively streamlines the Act’s execution by strengthening the Adjudicating Officer’s capabilities. The aim of this comprehensive approach is to optimise and refine the adjudicative framework, thereby fostering a more robust and coherent administration of trademark-related matters.
Amendments introduced –
- Definition clause – The draft rules have inserted new definitions to streamline the adjudication process. The rules now also define terms like ‘adjudicating officer’, ‘appellant’, ‘Appellate Authority’, ‘Complainant’.
- ‘Complainant’ means an aggrieved person who makes a compliant before the adjudicating officer.
- ‘Adjudicating Officer’ means an officer appointed in accordance with Section 112A[2] of the Act.‘Appellant’ is the person who prefers an appeal before the Appellate Authority under Section 112B[3] against the order of the Adjudicating Officer.
- ‘Appellate Authority’ refers to the officer appointed in accordance with Section 112B of the Act.
- Means of Communication – All the communications on adjudication of certain penalties under the Jan Vishwas Act, 2023 shall be deemed to be communicated electronically, whether via text message or email.
- Adjudication of certain penalties – The amended rules have added Chapter VII-A, which lays down a framework to adjudicate penalties. Any person can file a complaint under TM-D before the Registrar against any contravention or default under Section 107[4] of the Act — which deals with false representation of a registered trademark.
- Appointment of Adjudicating Officer – The Adjudicating Officer shall be appointed by the Registrar. Such Adjudicating Officer shall have the power to impose penalty upon any person found guilty of contravention under Section 107 of the Act.
- Allocation of complaints to Adjudicating Officer – The complaints shall be randomly and automatically allocated via a computer resource system to the Adjudicating Officer, in case of appointment of more than one Adjudicating Officer.
- Powers of Adjudicating Officer – The Adjudicating Officer shall have powers of a civil court, namely –
- Enforcing attendance of witnesses;
- Compelling the production of documents and material objects.
- Summary proceedings –
- When a case is not made out – When the Adjudicating Officer is satisfied that a prima facie case for maintainability of the complaint is not made out, then such complaint shall be quashed and dismissed summarily.The Adjudicating Officer shall pass a speaking order shall be passed within thirty (30) days of such summary dismissal of proceedings.
- When a case is made out – When the Adjudicating Officer is satisfied that a prima facie case for maintainability of the complaint is made out, then proceedings shall be commenced.
- Manner of summary proceedings –
- Firstly, there shall be serving of notice to the alleged violator along with serving a copy of the complaint within the prescribed time period;
- Secondly, on the receipt of a copy of the complaint, the person who has allegedly committed violation, shall file his statement under Form TM-OPP within a period of fifteen (15) days from the date of issuance of notice. Here he/she shall provide relevant facts, evidence, inter alia in support of the statement;
- Thirdly, a holding inquiry shall be conducted. The Adjudicating Officer shall issue a notice to the person who has allegedly committed violation under the Act, requiring the person to show cause upon maintainability of the complaint;
- Lastly, the final order shall be passed by the Adjudicating Officer, in writing, within a period of sixty (60) days.
- Quantum of compensation – The determination of quantum of compensation under this Act shall involve consideration of the following factors –
- The amount of gain or unfair advantage (whenever quantifiable);
- The amount of loss caused to any person;
- The repetitive nature of the default; and
- Extension of time period.
- Conducting an inquiry – If the Adjudicating Officer is of the opinion that an inquiry has to be conducted then such notice shall be issued, fixing a date for appearance of such person. The Adjudicating Officer shall provide reasonable opportunity of being heard to the person(s) concerned, and shall pass an order as he/she thinks fit, including imposition of such penalty or award such compensation, etc.
- If a person fails, neglects or refuses to appear then the Adjudicating Officer may proceed with the inquiry in absentia.
- Appeal – Any person aggrieved by any decision or order of the Adjudicating Officer may prefer an appeal under Form TM-DA to the Appellate Authority within a period of sixty (60) days from the date of receipt of the order.
- Disposal of appeal – On admission of the appeal, the Appellate Authority shall serve a copy of the appeal to the opposite party, requiring the opposite party to file his reply within a period, not exceeding, twenty-one (21) days. The Appellate Authority shall pass an order along with reasons to be recorded in writing. The Appellate Authority may –
- Confirm, modify or annul the decision or order appealed against; or
- Refer the matter back to the Adjudicating Officer for fresh adjudication or decision, as the case may be.
- Updated second schedule of Trademark Rules – The amended rules now also provide
- Form TM-D prescribing the format to file a complaint for any contraventions or default under Section 105(1)[5] of the Act;
- Form TM-OPP prescribing the format to file a written submission on behalf of the opposite party in respect of the complaint or contravention or default;
- Form TM-DA prescribing the format for filing an appeal under Section 112B of the Act.
The proposed amendments to the Trademark Rules, 2017 aspire to elevate the precision and efficiency of the adjudication process by providing increased authority to the stakeholders. Furthermore, the amendments aim to alleviate legal intricacies that may arise during the practical implementation of the Act, contributing to a more seamless and effective trademark governance.
Any objections or suggestions may be addressed to the ministry within 30 from the publication of the draft rules in the official gazette.
For further information, please contact:
Swati Sharma, Partner, Cyril Amarchand Mangaldas
swati.sharma@cyrilshroff.com
[1] Section 157: Power to make rules: This section empowers the central government to make rules to further the purpose of the Trademarks Act, 1999. This may include, but not limited to, the manner of advertising of an application for registration, or giving of notice of opposition, etc.
[2] Section 112A : Adjudication of penalties: This section provides for the appointment of adjudicating officer by the Registrar for the purpose of holding inquiry and imposing penalty under the Act.
[3] Section 112B: Appeal: The section provides for an appeal against the order of the Adjudicating Authority under Section 112A within sixty (60) days of receipt of the order of the adjudicating officer.
[4] Section 107: Penalty for falsely representing a trade mark as registered: It provides for penalty on any person making false representation with respect to a mark, a part of registered trademark, exclusive right arising from a trademark or to the effect that a registered trade mark is registered in respect of any goods or services in respect of which it is not in fact registered.
[5] Section 105: Enhanced penalty on second or subsequent conviction: This section provides for enhanced penalty on second and every subsequent conviction on offences provided in the Act.
