New Trade Marks (Holding Inquiry and Appeal) Rules, 2024

On August 16, 2024, the Ministry of Commerce and Industry announced the new Trade Marks (Holding Inquiry and Appeal) Rules, 2024 under notification G.S.R. 505(E). These rules, amending the Trade Marks Rules, 2017, mark a significant development in the handling of trademark disputes and enforcement under the Trade Marks Act, 1999.

1. Introduction to the New Rules

The Trade Marks (Holding Inquiry and Appeal) Rules, 2024 aim to streamline the process for holding inquiries and appeals related to trademark contraventions. Effective from the date of publication in the Official Gazette, these rules provide a structured framework for addressing violations and resolving disputes within the trademark domain.

Key Provisions of the notification:

Definitions

1. Act: Refers to the Trade Marks Act, 1999.
2. Adjudicating Officer: An officer designated under section 112A of the Act to handle inquiries.
3. Appellant: A person who is dissatisfied with an adjudicating officer’s order and files an appeal.
4. Appellate Authority: An officer authorized under section 112B of the Act to handle appeals.
5. Form: Refers to the specific forms appended to these rules.

 Complaint Filing (Rule 3)

• Complaints regarding contraventions under section 107 of the Act can be filed electronically using Form-I. This facilitates easier and more accessible filing of complaints.

Holding Inquiry (Rule 4)

1. Issuance of Notice: The adjudicating officer issues a notice through electronic means, requiring the respondent to show cause why an inquiry should not be held. The notice will specify the nature of the alleged contravention and must be responded to within at least seven days.
2. Conducting the Inquiry: If the adjudicating officer decides an inquiry is warranted, they will schedule a hearing. During the hearing, the officer explains the contravention and allows the respondent to present counter-statements and evidence. The officer is not bound by the provisions of the Bhartiya Sakshya Adhiniyam, 2023.
3. Evidence and Witnesses: The adjudicating officer can compel the attendance of witnesses and the production of documents relevant to the case.
4. Failure to Appear: If the respondent fails to appear, the inquiry may proceed in their absence, provided reasons for their non-appearance are recorded.
5. Order and Penalty: After considering the evidence, the adjudicating officer may impose penalties. The order will detail the contravention, the penalty imposed, and the reasons for the decision. Orders must be signed, dated, and copies provided free of cost to the affected parties.
6. Timeline: Proceedings must be completed within three months from the issuance of the notice.

 Appeals (Rule 5)

1. Filing an Appeal: An aggrieved party can file an appeal in Form-III within sixty days of the adjudicating officer’s order. The appellate authority may accept late appeals if sufficient cause is shown.
2. Appellate Process: Upon receiving an appeal, the appellate authority issues a notice for reply, gives both parties an opportunity to be heard, and issues a reasoned order. Proceedings should generally be completed within sixty days from receiving the appeal.

 Communication and Documentation (Rules 6 and 7)

1. Electronic Communication: All communications under these rules are transmitted electronically. Proof of transmission is based on proper addressing and electronic delivery.
2. Extension of Time: The adjudicating officer or appellate authority can extend deadlines for good reasons, with written records of such extensions.

 Orders and Penalties (Rule 8)

1. Order and Publication: All orders must be dated, digitally signed, communicated to all parties, and uploaded on the Intellectual Property India’s official website.
2. Penalties: Penalty amounts collected are credited to the Consolidated Fund of India.

2. Implications of the New Rules

The Trade Marks (Holding Inquiry and Appeal) Rules, 2024, introduce several improvements to the trademark enforcement process:

• Enhanced Efficiency: By incorporating electronic means for filing and communication, the rules aim to make the process more efficient and accessible.
• Structured Inquiry and Appeal: Clear guidelines for inquiries and appeals help ensure a fair and orderly process for resolving trademark disputes.
• Flexibility and Modernization: The rules adapt to modern practices and technological advancements, improving the handling of cases and interactions between parties.

These updates represent a significant step towards modernizing trademark adjudication and appeals, enhancing transparency, and ensuring timely resolution of trademark-related issues. For stakeholders in the intellectual property domain, staying informed about these changes is crucial for navigating the updated regulatory landscape effectively.