LEGAL INDIA : LAW, LAWYERS, ADVOCATES, ATTORNEY, LAW FIRMS : LEGAL NETWORK : LEGAL HELP, LEGAL ADVICE, LEGAL QUERY, LEGAL OPINION, LEGAL CONSULTANT, LEGAL NEWS, OF INDIA, IN INDIA » Intellectual Property Rights (IPR) Act & Rules

Trade Marks Forms and First Schedule

Legal India — Sat, 20 Jun 2009 17:58:43 +0000

THE FIRST SCHEDULE

[See rule 11]

FORMS AND FEES

Entry No.	On what payable	Amount Rs.	Corresponding Form Number
1.	On application to register a trade mark for a specification of goods or services included in one class [Section 18(1)]	2500.00	TM-1
2.	On application to register a textile trade mark (other than a certification trade mark or a collective mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods or services included in one item of the Fifth Schedule under rule25(5) & 145.	2500.00	TM-22
3.	On application to register a trade mark for goods or services included in a class from a convention country under section 18(1) & 154(2)	2500.00	TM-2
4.	On a single application under section 18(2) for the registration of a trade mark for different classes of goods or services from a convention country under section 154(2)	2500.00 for each class	TM-52
5.	On a single application under section 18(2) for the registration of a trade mark for different classes of goods or services.	2500.00 for each class	TM-51
6.	On application to register a series trade mark under section 15 for a specification of goods or services included in a class or different classes	2500.00 for each trade mark and for each separate class thereof	TM-8
7.	On application to register a series of trade mark from a convention country under section 154(2) for a specification of goods or services included in a class or classes	2500.00 for each trade mark and for each separate class thereof	TM-37
8.	On application under section 63(1) to register a collective mark for a specification of goods or services included in a class	10,000.00	TM-3
9.	On application under section 71(1) to register a certification trade mark for a specification of goods or services included in a class.	10,000.00	TM-4
10.	On application for the registration of a textile trade mark (other than a certification trade mark or a collective mark ) consisting exclusively of numerals or letters, or any combination thereof for a specification of goods or services included in one item of the Fifth Schedule under rule 145 from a convention country under section 154(2).	2500.00	TM-45
11.	On a request under rule 40(1) to state grounds of decision.	1000.00	TM-15
12.	On a notice of opposition under section 21 (1), 64, 66 or 73 for each class opposed.	2500.00	TM-5
13.	On application for extension of time for filing notice of opposition under section 21(1)	500.00	TM-44
14.	On a counter statement in answer to a notice of opposition under section 21, for each application opposed, or in answer to an application under any of the section 47 or 57 in respect of each trade mark or in answer to a notice of opposition under section 59 or rule 101 for each application or conversion opposed.	1000.00	TM-6
15.	On notice of intention to oppose hearing under any of the section 21, 47, 57 and 59 by each party to the proceeding concerned.	500.00	TM-7
16.	On application under section 16(5) to dissolve the association between registered trade marks.	500.00 for each dissolution	TM-14
17.	For renewal under section 25 of the registration of a trade mark at the expiration of the last registration not otherwise charged.	5,000.00	TM-12
18.	For renewal under section 25 of the registration of a series trade mark at the expiration of the last registration- For the first two marks of the series of each separate class: For every additional mark of the series of each separate class.	5,000.00 2500.00	TM-12
19.	For renewal under section 25 of a single application of a trade mark for goods or services in more than one class-in respect of every class.	5,000.00 for each class	TM-12
20.	For renewal under section 25 of the registration of a collective mark/certification trade mark.	20,000.00	TM-12
21	On application under section 25(4) for restoration of a trade mark removed from the register.	3000.00	TM-13
22.	On application for renewal under proviso to section 25(3) within six months from the expiration of last registration of the trade mark.	3000.00 as surcharge.	TM-10
23.	On application for certificate of the Registrar under section 40(2) : For the first mark proposed to be assigned. For every additional mark of the same proprietor included in that assignment .	2500.00 500.00	TM-17
24.	On application for approval of the Registrar under section 41- For the first trade mark . For every additional mark of the same proprietor included in the same transfer.	2500.00 500.00	TM-19
25.	On application under section 42 for direction of a Registrar for advertisement of assignment without goodwill of a trade mark in use- For the first mark assigned. For every additional mark assigned with the same devolution of title.	2500.00 2500.00 500.00	TM-20
26.	On application for extension of time for applying for directions under section 42 for advertisement of assignment without goodwill of trade mark in use in respect of devolution of title- Not exceeding one month Not exceeding two months Not exceeding three months	500.00 1000.00 1500.00	TM-21
27.	On application under section 45 to register a subsequent proprietor in a case of assignment or transfer of a single trade mark: If made within six months from the date of acquisition of proprietorship. If made after expiration of six months but before 12 months from the date of acquisition of proprietorship. If made after 12 months from date of acquisition of proprietorship.	5000.00 7500.00 10,000.00	TM-23 OR TM -24 TM-23 OR TM-24. TM-23 OR TM-24. TM-23 OR TM-24.
28.	On application under section 45 to register a subsequent proprietor of more than one trade mark registered in the same name, the devolution of title being the same in each case:- If made within six months from the date of acquisition of proprietorship- For the first mark For every additional mark If made after the expiration of six months but before twelve months from the date of acquisition of proprietorship:- For the first mark For every additional mark If made after expiration of twelve months from the date of acquisition of proprietorship:- For the first mark For every additional mark	5000.00 1000.00 7500.00 1500.00 10,000.00 2000.00	TM-23 OR TM-24. TM-23 OR TM-24. TM-23 OR TM-24. TM-23 OR TM-24. TM-23 OR TM-24. TM-23 OR TM-24.
29.	On application under section 46(4) for extension of time for registering a company as subsequent proprietor of trade marks on one assignment :- Not exceeding two months Not exceeding four months Not exceeding six months	500.00 1000.00 1500.00	TM-25
30.	On application under any of the sections 47 or 57 for rectification of the register or removal of a trade mark from the register or cancellation of a registered collective mark or a certification trade mark	3000.00	TM-26
31.	On application under rule 94 for leave to intervene in proceeding under any of the sections 47 or 57 for rectification of the register or removal of trade mark from the register or under rule 133 or 139 in respect of a collective mark or certification trade mark.	500.00	TM-27
32.	On application under section 49 to register a registered user of a registered trade mark in respect of goods or services within the specification thereof.	5000.00	TM-28
33.	On application under section 49 to register the same registered user of more than one registered trade mark of the same registered proprietor, where all the trade marks are covered by the same registered user agreement in respect of goods or services within the respective specification thereof and subject to the same conditions and restrictions in each case:- For the first mark For every additional mark of the proprietor included in the application, and in the registered user agreement	5000.00 3000.00	TM-28
34.	On application under clause (a) of sub-section 1 of section 50 to vary the entry of a registered user of one trade mark where the trade marks are covered by the same registered user in respect of each of them:- For the first mark For every additional mark included in the application	5000.00 2500.00	TM-29
35.	On application under clause (b) of sub-section (1) of section 50 for cancellation of the entry of a registered user of one trade mark- Where the application includes more than one trade mark- For the first mark For every additional mark included in the application	2500.00 2500.00 500.00	TM-30
36.	On application under clause (c) or (d) of sub-section (1) of section 50 to cancel the entry of a registered user of one trade mark:- Where the application includes more than one trade mark:- For the first mark For every additional mark included in the application	5000.00 5000.00 2000.00	TM-31
37.	On notice under rule 90(2 ) of intention to intervene in one proceeding for the variation or cancellation of entries of a registered user of a trade mark	500.00	TM-32
38.	On application under section 58 to change the name or description of a registered proprietor or a registered user of a trade mark where there has been no change. In the proprietorship or in the identity of the registered user (except where the application is made as a result of an order of a public authority or in consequence of a statutory requirement as per law in India where the application includes more than one trade mark - For the first trade mark For every additional mark included in the application	1000.00 1000.00 1000.00 500.00	TM-33
39.	On application under section 58 to alter an entry of the address of a registered proprietor or of a registered user of a trade mark unless exempted from fee under rule 96(3): Where the application include more than one trade mark – and where the address in each case is the same and is altered in the same way- For the first entry For every other entry included in the application	500.00 500.00 200.00	TM-34
40.	On application to make an entry of an address for service in India of a registered proprietor or a registered user of a trade mark- where the application include more than one trade mark and the address for service to be entered is the same in each case- For the first entry For every other entry included in the application.	500.00 500.00 200.00	TM-50
41.	On application to alter or substitute an entry of an address for service in India in the register unless exempted from fee under rule 96(3) . Where the application includes more than one trade mark and the address in each case is the same and is altered or substituted in the same way- For the first entry For every other entry included in the application	500.00 500.00 200.00	TM-50
42.	On application under clause (c) of sub-section (1) of section 58 for canceling the entry or part thereof from the register or under clause (d) to strike out goods or services from the register.	200.00	TM-35 OR TM-36
43.	On application under section 59(1) for leave to add or alter a registered trade mark (except where the application is made as a result of an order of a public authority or in consequence of statutory requirement)- Where the application includes more than one trade mark and the addition or alteration to be made in each case being the same- For the first mark For every other mark included in the application.	2500.00 2500.00 1000.00	TM-38
44.	On notice of opposition under sub-section (2) of section 59 to an application for leave to add or to alter a registered trade mark for each application opposed	1500.00	TM-39
45.	On application under section 60 for conversion of specification.	1000.00	TM-40
46.	On notice of opposition in each separate class under sub-section 2 of section 60 to a conversion of the specification or specifications of a registered trade mark: For the first mark For every additional mark included in the notice of opposition.	1500.00 1500.00 700.00	TM-41
47.	On application under section 66 for amendment of the deposited regulations of a collective mark or alteration under section 74(2) for the regulation of a certification trade mark- Where the marks are entered in the register as associated trade marks- For the regulation of one registration. For the same or substantially same regulation of each additional registration proposed to be altered in the same way and included in the same application.	1000.00 1000.00 200.00	TM-42
48	On application under section 68 to remove the registration of a collective mark or cancel or vary the registration of a certification trade mark under section 77	1000.00	TM-43
49.	For a search under rule 24(1) in respect of one class	500.00	TM-54
50.	On request for the Registrar’s preliminary advice under section 133(1) for a trade mark in respect of one class.	1000.00	TM-55
51.	On request for certificate of the Registrar under section 137( other than a certificate under section 23(2)).	500.00	TM-46
52.	On request for certificate of the Registrar [other than certificate under section 23(2)] of the registration of a series of the trade mark under section 15 for each class.	500.00	TM-46
53.	On request for a certified copy of any entry in the register or of any document under section 148(2).	500.00	TM-46
54.	On request to enter in the register and advertise a note of certificate of validity, under rule 124 in respect of one mark in a class	200.00	TM-47
55.	On request, not otherwise charged for correction of a clerical error or for amendment under section 18(4), 22 and 58, except where the request is made as a result of an order of a public authority or in consequence of a statutory requirement as per law in India.	500.00	TM-16
56.	On application for extension of time for a month or part thereof under section 131 [not being a time expressly provided in the Act or prescribed by rule 79 or by rule 80(4)]	500.00	TM-56
57.	On application for review of the Registrar’s decision under section 127 (c)	2000.00	TM-57
58.	On petition (not otherwise charged) for obtaining Registrar’s order on any interlocutory matter in a contested proceeding.	2500.00
59.	On request to Registrar for particulars of advertisement of a mark under rule 46.	250.00	TM-58
60	For inspecting the documents mentioned in section 148(1):- relating to any particular trade mark for every hour or part thereof. computer search (when made available) for every fifteen minutes search of index mentioned in section 148 for every hour or part thereof	200.00 400.00 200.00
61	For copying of documents, (photocopy or typed) for every page of part thereof in excess of one page.	5.00 per page(subject to a minimum of Rs. 5.00)
62.	On request for a duplicate or further copy of certificate rule 62(3)	500.00	TM-59
63.	On a counter statement in answer to a notice of opposition in respect of a collective trade mark or a certification trade mark under section 64, 66,73 or 77.	1500.00	TM-9
64.	For search and issue of certificate under rule 24(3).	5000.00	TM-60
65.	On application under sub-section (b) of section 25 of Geographical Indications of Goods (Registration and Protection )Act, 1999 to refuse or invalidate the registration of a trade mark which conflicts with or which contains or consists of a geographical indication identifying goods or class or classes of goods notified under sub-section (2) of section 22 of the said Act.	3000.00	TM-74
66.	On application under sub-section (a) of section 25 of Geographical Indications of Goods (Registration and Protection )Act, 1999 to refuse or invalidate the registration of a trade mark containing or consisting of a geographical indicating not originating in the territory of a country or a region or locality in that territory which the geographical indication indicates.	3000.00	TM-73
67.	Notice of intention to attend hearing under section 64, 66, 73 or 77 in respect of a collective mark or in respect of a certification trade mark, as the case may be.	500.00	TM-7
68.	On a request to divide an application or to divide a single application under proviso to section 22.	1000.00 plus appropriate class fee	TM-53
69.	On application under sub-rule 16 of rule 25 towards inclusion of specification of goods or services in excess of five hundred characters at the time of filing of application as excess space fee.	10.00 per character	TM-61
70.	On application under section 43, rule 140(2) for consent of Registrar to the assignment or transmission of certification trade mark.	1000.00	TM-62
71.	On application under rule 38(1) for the expedited examination of an application for the registration of a trade mark.	12,500.00	TM-63
72.	On application under section 63(1) to register a collective mark of a specification of goods or services included in a class from a convention country under section 154(2).	10,000.00	TM-64
73.	On application under section 71 to register a certification trade mark for a specification of goods or services included in class from a convention country under section 154(2).	10,000.00	TM-65
74.	On request for an expedited certificate of the Registrar (other than a certificate under section 23(2) of the Act) or certified copies of documents under proviso to rule 119.	2500.00	TM-7
75.	On request for an expedited search under proviso to rule 24(1).	2500.00	TM-71
76.	On request for an expedited search and issuance of a certificate under rule 24(5).	25000.00	TM-72
77.	On application for registration as a trade mark agent under 152.	1000.00	TMA-1
78.	For registration of a person as a trade mark agent under rule 154.	1000.00
79.	For continuance of the name of a person in the Register of Trade Marks Agents under rule 156:- For every year (excluding the first year) to be paid on the 1^st April, in each year. For the first year to be paid along with the fee or registration, in the case of a person registered at any time between the 1^st April, and 30th September. N.B. A year for this purpose will commence on the 1^st day of April, and end on the 31^st day of March following.	1000.00 1000.00
80.	On application for restoration of the name of a person to the Register of trade marks agents under rule 159.	1000.00 plus continuance fee under entry no. 79.	TMA-2
81.	On application for an alteration of any entry in the Register of Trade Marks Agent under rule 160.	200.00	TMA-3
82.	For each addition to the registered entry of a trade mark that may be associated with a newly registered mark under section 16(1).	500.00
83.	On a single application under section 18(2) for the registration of a collective mark for different classes of goods or services.	10,000.00 for each class.	TM-66
84.	On a single application under section 18(2) for the registration of a collective mark for different class of goods or services from a convention country.	10,000.00 for each class.	TM-67
85.	On a single application under section 18(2) for the registration of a certification trade mark for different class of goods or services.	10,000.00 for each class.	TM-68
86.	On a single application under section 18(2) for the registration of a certification trade mark for different class of goods or services from a convention country under section 154(2).	10,000.00 for each class.	TM-69
87.	On request for search and issuance of a certificate pursuant to clause (ii) of sub-section (2) of section 20 of the Companies Act, 1956.	5000.00	TM-75

THE SECOND SCHEDULE FORMS

List of Forms

Form No	Section	Title Entry	Act No
TM-1	18(1),rule 25(2)	Application for registration of a trade mark for goods or services (other than a collective mark or a certification trade mark)	1
TM-2	18(1),154(2)	Application for registration of a trade mark from convention country (other than a collective mark or a certification trade mark)	3
TM-3	63(1)	Application for registration of a collective mark	8
TM-4	71(1)	Application for registration of a certification trade mark.	9
TM-5	21(1),64, 66, 73	Notice of opposition to an application for registration of a trade mark, collective mark or certification trade mark.	12
TM-6	21(2), 47, 57, 59(2)	Form of counterstatement	14
TM-7	21, 47, 57, 59, 64,66 73 and 77	Notice of intention to attend hearing.	15
TM-8	15(3)	Application for registration of series trade marks for goods or services in a class or different classes	6
TM-9	64, 66, 73 and 77	Form of counterstatement in answer to Notice of Opposition in respect of a collective mark or a certification trade mark	63
TM-10	25(3)	Proviso Payment of surcharge towards renewal of to trade mark, certification trade mark and collective mark.	22
TM-12	25	Application for renewal after expiry of last registration of a trade mark/collective mark/certification trade mark	17 to 20
TM-13	25(4)	Application for restoration of a trade mark removed from the register	21
TM-14	16(5)	Application to dissolve association between registered trade mark	16
TM-15	40(1)	rule Request for statement of grounds of decision	11
TM-16	18(4), 22 and 58	Request for correction of clerical error or for amendment rule 41	55
TM-17	40(2),rule 77	Application for the certificate of the Registrar under Section 40(2) with regard to proposed assignment of registered trade mark.	23
TM-18	40(2)	Affidavit in support of statement of case.	rule 68
TM-19	41, Rule 77	Application for approval by the Registrar of a proposed assignment or transmission of trade mark resulting in exclusive rights in different parts of India.	24
TM-20	42, rule 74(1)	Application for directions for advertisement of an assignment of trade marks otherwise than in connection with goodwill of the business.	25
TM-21	42, rule 74(3)	and rule Application for extension of time in which to apply for the Registrar’s directions for the advertisement of an assignment of trade marks otherwise than in connection with the goodwill of the business.	26
TM-22	18(1) rule 25(5), 144 and 145	Application to register a textile trade mark (other than a certification trade mark or a collective mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods or services included in one item of the Fifth Schedule under rule 145	2
TM-23	45	Joint request by registered proprietor and transferee to register the transferee as subsequent proprietor of trade marks upon the same devolution of title.	27,28
TM-24	45,rule 68	Request to register a subsequent proprietor of a trade mark or trade marks upon the same devolution of title.	27,28
TM-25	46(4), rule 79	Application for extension of time for the registration of the name of a company as a subsequent proprietor of a trade mark in the register.	29
TM-26	47, 57	Application for the rectification of the register or the removal of a trade mark from the register.	30, rule 92
TM-27	rule 94, 133, 139	Application for leave to intervene in proceedings relating to the rectification of the register or the removal of a trade mark from the register or a collective mark or a certification trade mark.	31
TM-28	49, rule 80	Application for registration of registered user	32,33
TM-29	50 (1)(a), rule 87	(a) Application by the registered proprietor of a trade mark for variation of the registered user thereof with regard to the goods or services or the condition or restriction.	34
TM-30	50(1)(b), rule 88(1)	(b) Application by the Registered Proprietor of a trade mark or by any of the registered users of the trade mark for the cancellation of entry of a registered user thereof.	35
TM-31	50(1)(c) or (d), rule 88(1)	(c) Application for cancellation of entry of a or (d) registered user of a trade mark of a trade mark.	36
TM-32	rule 90(2)	Notice of intention to intervene in proceedings for the variation or cancellation of an entry of a registered user of a trade mark	37
TM-33	58, rules 91,97	Request to enter change of name or description of registered proprietor (or registered user of trade mark upon the register).	38
TM-34	58, rules 91, 96, 97	Request for alteration of the address of the principal place of business of residence in India or of the address in the home country abroad in the Register of Trade Marks	39
TM-35	58 (1)(c ), rule 97	Application by registered proprietor of trade mark for the cancellation of entry thereof in the register.	42
TM-36	58(1)(d). rule 97	Application by registered proprietor of trade 42 mark to strike out goods or services from those for which the trade mark is registered
TM-37	154(2) and 15(3), rule 25(11), 26 and 31	Application in respect of series trade mark from convention countries under section 154(2) 26 & 31 for goods or services in a class or for different classes	7
TM-38	59(1)	Application by registered proprietor under Section 59 for an addition to or alteration of a registered trade mark	43
TM-39	59(2), rule 99(2)	Notice of opposition to application for addition to or alteration of a registered trade mark	44
TM-40	60, Rule 101	Application by the proprietor of a registered trade mark for the conversion of the specification	45
TM-41	60(2), Rule 101(4)	Notice of opposition to proposal for conversion of specification under section 60(2)	46
TM-42	66 or 74(2) rule 132(a), 140	Request for amendment of deposited regulations governing the use of a collective mark or alteration of deposited regulation of a certification trade mark	47
TM-43	68,77 and rules 92, 133,139	Application for removal from the register of a collective mark or to cancel or vary the registration of a certification trade mark.	48
TM-44	21(1) rule 47(6)	rule Application for extension of time for giving notice of opposition to a trade mark	13, 47(6)
TM-45	18(1), 154(2) rule 25(6), 26, 144, and 145	An application to register a textile trade mark (other than a collective mark or certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods or services included in one item of the Fifth Schedule from a convention country u/s	10, 154 (2)
TM-46	137 or 148(2), rule 119 and 120	Request for certificate of the Registrar or certified copies of documents	51 to 53
TM-47	141 rule 124	Request for entry in the register and advertisement of a note of the certificate of validity by the Appellate Board.	54
TM-48	145 and rule 21	Form of Authorisation of Agent in a matter or proceeding under the Act
TM-49	63, 71 Rule 128(1),135(1)	Regulations for governing the use of a rule 128(5) collective trade mark or acertification trade mark or 135(1)
TM-50	rule 91,96,97	Form of request by a registered proprietor or a registered user of a trade mark who has no principal place of business in India, to enter, alter or substitute an address for service in India.	40,41
TM-51	18(2), rule 25(9), 103	A single application under section 18(2) for rule 25(9) registration of a trade mark for goods or services in different classes.	5
TM-52	18(2) rule 25(4), 103	A single application u/s 18(2) for registration rule 25(4) of a trade mark from convention country u/s 154(2)	4
TM-53	22 rule 104(1)	Proviso Divisional application to section 22	68
TM-54	rule 24(1)	Request for search	49
TM-55	133(1) rule 23	Preliminary advice as to distinctiveness	50
TM-56	131, rule 105	Request for extension of time	56
TM-57	127(c), rule 115	On application for review of Registrar’s decision	57
TM-58	rule 46	Application for particulars of advertisement of a trade mark	59
TM-59	rule 62(3)	Application for duplicate or further copy of certificate of registration	62
TM-60	rule 24(3)	Application for search and certificate under Section 45(1) of the Copyright Act, 1957	64
TM-61	rule 25(16)	Application for inclusion of specification of goods or services in excess of five hundred characters	69
TM-62	43, rule 140(2)	Application for the consent of the Registrar to rule 140(2) the assignment or transmission of certification trade mark	70
TM-63	rule 38(1)	Request for expedited examination of an application for the registration of a trade mark under rule 38(1)	71
TM-64	63(1), 154(2), Rule 128(1)	Application to register a collective mark for rule 128(1) a specification of goods or services included in a class from convention country under section 154(2)	72
TM-65	154(2), rule 25(8)(b), 135(1)	Application under section 71 to register a Certification trade mark for a specification of goods or services included in a class from convention country under section 154(2)	73
TM-66	18(2),63(1). rule 25(17(a),103, 128(1).	Single application for registration of a collective trade mark for different classes of goods or services	83
TM-67	18(2), 63(1), 154(2), rule 25(17)(b), 103,128(1)	Single application for registration of a collective trade mark for different classes of goods or services from a convention country under section 154(2)	84
TM-68	18(2), 71	Single application for registration of a certifi- cation trade mark for different classes of goods or services	85
TM-69	18(2), 71, 154(2),	Single application for registration of a certifiation trade mark for different classes of goods or services from a convention country under section 154(2).	86, 71
TM-70	137, 148. rule 8(2)( c), Provision to rule 119	proviso Request for expedited certificate of the Registrar or certified copies of documents	74
TM-71	rule 8 (2)(c) Provision to rule 24(1).	Proviso to Request for expedited search in respect of one class	75
TM-72	rule 8(2)(c ), 24(5)	Request for expedited search certificate under section 45(1) of the Copyright Act,1957	76
TM-73	Section 25(a), rule 74(2)	Request to refuse or invalidate a trade mark Of Geogra- Consisting of a geographical indication. phical Indi- cations of . Goods (Registration and Protection)Act, 1999, rule 74(2) of Geographical Indications Goods Rules, 2001 and rule 102 of Trade Marks Rules, 2001	66
TM-74	Section 25(b), rule 75(2)	Request to refuse or invalidate a trade mark of Geogra- conflicting with or containing or consisting phical Indi- of a geographical indication notified under cations of sub-section (2) of section 22 of the Goods Geographical Indications of Goods (Regi- (Registration stration and Protection)Act,1999 and Protection)Act, 1999, rule 75(2) of Geographical Indications Goods Rules and rule 102 of Trade Marks Rules, 2001	65
TM-75	rule 32	Request for search and issuance of certificate under rule 32	87
TMA-1	rule 153	Application for registration as a trade mark agent	77
TMA-2	rule 159	Application for restoration of the name of person to the register of trade marks agents	80
TMA-3	rule 160	Application for the alteration of an entry in the Register of Trade Marks Agents.	81

Act of 2000

Legal India — Tue, 09 Jun 2009 19:42:59 +0000

design_act

Rules, 2001

Legal India — Tue, 09 Jun 2009 19:39:13 +0000

des_rule

Designs (Amendment) Rules 2008

Legal India — Tue, 09 Jun 2009 19:35:37 +0000

designrules_28jul2008

List of forms,Designs

Legal India — Tue, 09 Jun 2009 19:21:40 +0000

THE SECOND SCHEDULE
(See rule 6)

List of forms

Form No.

Section or Rule

Title

1

Sections 5 and 44

Application for registration of design/Application under reciprocal arrangement.

2

Section 8(1)

Claim to proceed as an applicant or joint applicant.

3

Section 11(2)

Application for Extension of copyright.

4

Section 12(2)

Application for Restoration of lapsed design

5

Section 17(1)

Inspection of registered design

6

Section 18

Request for information when registration number is given.

7

Section 18

Request for information when registration number is not given.

8

Section 19

Petition to cancel registration of design.

9

Section 21

Notice of intended exhibition or publication of unregistered design.

10.

Section 30(3)

Application for registration of a document in the Register Design.

11

Section 30

Application for entry of name of proprietor or part proprietor in the Register

12

Section 30

Application for entry of mortgage or licence in the Register.

13.

Section 30 and rule 37

Application for entry of notification of a document in the Register.

14

Section 29

Request for correction of clerical error.

15

Section 26 and rule 41

Request for certificate.

16

Section 17(2)

Application for certified copy of registered design.

17

Section 31

Application for rectification of Register.

18

rule 15

Application for extension of time for filing priority document.

19

rule 40

Notice of opposition.

20

rules 29 and 40

Notice of intention to attend hearing.

21

Section 43

Power of authority to agents.

22

rule 31

Request to alter name or address or address for service in Register

23

Section 10
Request for entries of two addresses in theRegister

General Information Booklet for Registration of Design

Legal India — Tue, 09 Jun 2009 18:49:47 +0000

designs_filing

How to file an application for industrial design?

Legal India — Tue, 09 Jun 2009 18:42:58 +0000

industrial designs

Step 1 Finding out whether any registration already exists

The Designs office can assist you to search whether the design has been

previously registered. If the registration number is known, Form No.-6 should

be filed along with the prescribed fees of Rs. 500. If the representation of the

article or the specimen of the article is filed Form No.-7 along with the

prescribed fees of Rs. 1,000 is required.

Step 2 Preparing a representation of the design

A representation is the exact representation of the article on which the design

has been applied. It should be prepared on white A4 size paper of durable

quality. Do not prepare it on cardboard or mount it on other paper. Indicate

details of the design and applicant clearly.

Step 3 Identifying the class of design

Designs are required to be categorized in separate classes in order to provide

for systematic registration. An internationally accepted classification of

Industrial Designs based upon the function of the article is required. The class

and sub-class should be mentioned in the application. There are 32 classes

and most of the classes are further divided into sub-classes

Step 4 Providing a statement of novelty

A statement of novelty should be included on the representation of a design as

per the Act in order to specify the claim. This will enable speedier examination

and provide a more specific protection. The claim will protect the overall visual

appearance of the design as described in the representation of drawing.

Step 5 Including a disclaimer

If the ornamental pattern on an article is likely to be confused with a trade

mark, suggests any mechanical action or contains words, letters, numerals,

etc., a disclaimer should be included in the representation.

Step 6 Claiming a priority date

If you have applied for protection of the design in convention countries or

countries which are members of inter-governmental organizations, you can

claim registration of the design citing a priority date in India. This is the date

of filing of the application in any of such countries provided the application is

made in India within six months

How to file an application for industrial design?

A ten step guide

Step 7 Determining the fee to be paid

Applications are to be accompanied by the required fee through cheque or

draft payable at Kolkata or in cash (if filed in Design Office, Kolkata).

Application for the registration of design is Rs 1,000 and for renewal it is Rs.

2,000.

Step 8 Ensuring all enclosures are attached

File an application only after ensuring that all enclosures and fee in the

required numbers are attached. Applications can be filed in either the Design

Office in Kolkata or the branch offices of the Patent office in Delhi, Mumbai or

Chennai.

Step 9 Complying with objections (if any)

If the Design Office seeks additional information or clarifications after

preliminary examination, please ensure that these are provided promptly.

This will help the office to take up your application for early examination.

Step 10 Providing full details

While filing an application make sure that all contact details and addresses

are clearly and legibly filled in. This will enable the office to keep in touch with

you and convey decisions.

Please remember that all designs are not registerable. Designs

registered come into force from the date of registration. Designs

registered should be renewed in time for them to be valid.

You may get more information on filing procedures, hearing dates, etc.

through e-mail at

designin@giascl01.vsnl.net.in

The Design Office is

expected to register your design in six months.

Whom to contact

Assistant Controller of Designs

Design Office

Floor, 2nd MSO Building,

Nizam Palace, J.C. Bose Road,

Kolkata 700 020

Tel: + 91 33

281-3421

Fax: + 91 33

281-3423

industrial designs

ipindia.nic.in

Designs

Legal India — Tue, 09 Jun 2009 18:38:59 +0000

Q.1 What is meant by Intellectual Property ?

Ans. Intellectual Property is the Property, which has been created by exercise of Intellectual Faculty. It is the result of persons Intellectual Activities. Thus Intellectual Property refers to creation of mind such as inventions, designs for industrial articles, literary, artistic work, symbols which are ultimately used in commerce. Intellectual Property rights allow the creators or owners to have the benefits from their works when these are exploited commercially. These rights are statutory rights governed in accordance with the provisions of corresponding legislations. Intellectual Property rights reward creativity & human endeavor which fuel the progress of humankind. The intellectual property is classified into seven categories i.e . (1) Patent (2) Industrial Design (3) Trade Marks (4) Copyright (5) Geographical Indications (6) Lay out designs of integrated circuits (7) Protection of undisclosed information/Trade Secret according to TRIPs agreements.

Q.2. What is meant by ‘Design’ under the Designs Act, 2000 ?

Ans. ‘Design’ means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle or construction or any thing which is in substance a mere mechanical device, and does not include any trade mark, as define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.

Q. 3. What is meant by an article under the Designs Act, 2000 ?

Ans. Under the Designs Act, 2000 the “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;

Q.4. What is the object of registration of Designs?

Ans. Object of the Designs Act to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of design Registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.

Q.5. What are the essential requirements for the registration of ‘design’ under the Designs Act, 2000

?

Ans. (1) The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to new subject matter. Practical example:

The known shape of “Kutub Minar” when applied to a cigarette holder the same is registrable. However, if the design for which application is made does not involve any real mental activity for conception, then registration may not be considered.

(2) The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Thus, designs of industrial plans, layouts and installations are not registrable under the Act. (3) The design should be applied or applicable to any article by any industrial process. Normally, designs of artistic nature like painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act. (4) The features of the design in the finished article should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state. (5) Any mode or principle of construction or operation or any thing which is in substance a mere mechanical device, would not be registrable design. For instance a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act. However, when any design suggests any mode or principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect there of is required to be inserted on its representation, provided there are other registrable features in the design. (6) The design should not include any Trade Mark or property mark or artistic works as define under the Copyright Act, 1957.

Q.6. Can stamps. Labels, tokens, cards, be considered an article for the purpose of

registration of Design?

Ans: No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the Designs applied to it. [Design with respect to label was held not registrable, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to an article should be integral with the article itself.

Q.7. When does the Applicant for Registration of Design get the registration certificate?

Ans: When an application for registration of a Design is in order, it is accepted and registered and then a certificate of registration is issued to the applicant.

However, a separate request should be made to the Controller for obtaining a certified copy of the certificate for legal proceeding with requisite fee.

Q.8. What is a Register of Designs?

Ans: The Register of Designs is a document maintained by The Patent Office, Kolkata as a statutory requirement. It contains the design number, class number, date of filing (in this country) and reciprocity date (if any), name and address of Proprietor and such other matters as would affect the validity of proprietorship of the design and it is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.

Q.9. What is the effect of registration of design?

Ans. The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered.

Q.10. What is the duration of the registration of a design? Can it be extended?

Ans. The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date.

This initial period of registration may be extended by further period of 5 years on an application made in Form-3 accompanied by a fee of Rs. 2,000/- to the Controller before the expiry of the said initial period of Copyright.

The proprietor of a design may make application for such extension even as soon as the design is registered.

Q.11. What is the date of registration?

Ans. The date of registration except in case of priority is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.

Q.12. Is it possible to re-register a design in respect of which Copyright has expired?

Ans. No. A registered design, the copyright of which has expired cannot be re-registered.

Q.13. How one can ascertain whether registration subsists in respect of any design?

Ans. For ascertaining whether registration subsists in respect of a design, a request should be made to the Patent Office, Kolkata. If the serial number of the registered design is known, the request should be made on Form 6, otherwise on Form 7, together with fee of Rs. 500/- or Rs. 1,000/- respectively. Each such request should be confined to information in respect of a single design.

Q.14. What is piracy of a Design?

Ans: Piracy of a design means the application of a design or its imitation to any article belonging to class of articles in which the design has been registered for the purpose of sale or importation of such articles without the written consent of the registered proprietor. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.

Q.15. What is the penalty for the piracy of a registered Design?

Ans: If anyone contravenes the copyright in a design he is liable for every offence to pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/- recoverable as contract debt in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for injunction against repetition of the same. Total sum recoverable shall not exceed Rs. 50,000/-as contract debt as stated in Section 22(2)(a). The suit for infringement, recovery of damage etc should not be filed in any court below the court of District Judge.

Q.16. Is marking of an article compulsory in the cases of article to which a

registered design has been applied?

Ans: Yes, it would be always advantageous to the registered proprietors to mark the article so as to indicate the number of the registered design except in the case of Textile designs. Otherwise, the registered proprietor would not be entitled to claim damages from any infringer unless the registered proprietor establishes that the registered proprietor took all proper steps to ensure the marking of the article, or unless the registered proprietor show that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

Q. 17. Can the Registration of a Design be cancelled ?

Ans.: The registration of a design may be cancelled at any time after the registration of design on a petition for cancellation in form 8 with a fee of Rs. 1,500/-to the Controller of Designs on the following grounds:

That the design has been previously registered in India or
That it has been published in India or elsewhere prior to date of registration or
The design is not new or original or
Design is not registrable or
It is not a design under Clause (d) of Section 2.

Q. 18. Is it mandatory to make the article by industrial process or means before making an application for registration of design ?

Ans.: No, design means a conception or suggestion or idea of a shape or pattern which can be applied to an article or intended to be applied by industrial process or means. Example- a new shape which can be applied to a pen thus capable of producing a new appearance of a pen on the visual appearance. It is not mandatory to produce the pen first and then make an application.

Q. 19. Why is it important for filing the application for registration of design at the earliest possible ?

Ans.: First-to-file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates only first application will be considered for registration of design.

Q. 20. Can the same applicant make an application for the same design again, if the prior application has been abandoned ?

Ans.: Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.

Q. 21. How to get information on registration of design ?

Ans.: After registration of designs the most relevant view(s) of the article alongwith other bibliographic data will be available in the official gazette, which is being published on every Saturday. However, such provision cannot be implemented at this stage due to insufficient infrastructure.

Q. 22. Whether it is possible to transfer the right of ownership ?

Ans.: Yes, it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and condition of the contract/agreement etc. An application in form-10, with a fee of Rs. 500/- in respect of one design and Rs. 200/- for each additional design, for registration of the transfer documents is required to be made by the beneficiary to the Controller within six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarized copy of the instrument to be registered is required to be enclosed with the application.

Q. 23. What is meant by priority claim ?

Ans. India is one of the countries party to the Paris Convention so the provisions for the right of priority are applicable. On the basis of a regular first application filed in one of the contracting state, the applicant may within the six months apply for protection in other contracting states, latter application will be regarded as if it had been filed on the same day as the first application.

Q. 24. How it is possible to restore the lapse design due to non-payment of extension fee within prescribed time ?

Ans.: a registration of design will cease to be effective on non-payment of extension fee for further term of five years if the same is not paid before the expiry of original period of 10 years. However, new provision has been incorporated in the Act so that lapsed designs may be restored provided the following conditions are satisfied:

Application for restoration in Form-4 with fee of Rs. 1,000/- is filed within one year from the date of lapsed stating the ground for such non-payment of extension fee with sufficient reasons.
If the application for restoration is allowed the proprietor is required to pay the extension fee of Rs. 2,000/- and an additional fee of Rs. 1,000/- and finally the lapsed registration is restored.

Q. 25. Can the name, address of proprietor or address for service be altered in the register of design ?

Ans.: Name of the registered proprietor, address or address for service can be altered in the register of designs provided this alteration is not made by way of change of ownership through conveyance i.e. deed of assignment, transmission, licence agreement or by any operation of law, for which reference may be made to the answer against Q. 21. Application in form-22 with a fee of Rs. 200/- should be filed to the Controller of Designs with all necessary documents in support of the application as required.

Q. 26. Are the registered designs open for public inspection ?

Ans.: Yes, registered designs are open for public inspection only after publication in the official gazette on payment of prescribed fee of Rs. 500/- on a request in Form-5.

Q. 27. Can the application for registration of design be filed by the applicant himself

only or through a professional person ?

Ans.: The application for registration of design can be filed by the applicant himself or through a professional person (i.e. patent agent, legal practitioner). However, for the applicants not resident of India an agent residing in India has to be employed.

Q. 28. How does a registration of design stop other people from exploiting ?

Ans.: Once a design is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the design right, in the Court not lower than District Court in order to stop such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, it may please be noted that if the design is not registered under the Designs Act, 2000 there will be no legal right to take any action against the infringer under the provisions of the Designs Act, 2000.

The Patent Office does not become involved with any issue relating to enforcement of right accured by registration, similarly The Patent Office does not involve itself with any issue relating to exploitation or commercialization of the registered design.

Q. 29. What are the important criteria for determining a “set of article” ?

Ans.: If a group of articles meets the following requirements then that group of articles may be regarded as a set of articles under the Designs Act, 2000:

Ordinarily on sale or intended to be used together.
All having common design even though articles are different (same class).
Same general character.

Generally, an article having the same design and sold in different sizes is not considered as a set of articles. Practical example: “Tea set”, “Pen set”, “Knife set” etc.

Q.30. What is an artistic work which are not subject matter of registration ?

Ans.: An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration which reads as follows:

“Artistic works” means: -

A painting, a sculpture, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality.
An work of architecture and
Any other work of artistic craftsmanship.

Q. 31. What is meant by classification of goods mentioned in the Third Schedule ?

Ans.: In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. The classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. This classification has been made on the basis of Articles on which the design is applied.

Practical Example: If the design is applied to a toothbrush it will be classified under class 04-02. Similarly if the design is applied to a calculator, it will be classified in class 18-01. Subsequent application by the same proprietor for registration of same or similar design applied to any article of the same class is possible, but period of registration will be valid only upto period of previous registration of same design.

Q. 32. What is meant by Property mark as per the Indian Penal Code (Sec. 479) ?

Ans.: A mark used for denoting that movable property belongs to a particular person is called a property mark. It means that marking any movable property or goods, or any case, package or receptacle containing goods; or using any case, package or receptacle, with any mark thereon.

Practical example: The mark used by the Indian Railway on their goods may be termed as a Property Mark for the purpose of easy identification of the owner.

NEW ELEMENTS IN TRADE MARKS ACT, 1999

Legal India — Tue, 09 Jun 2009 18:22:17 +0000

Major changes that have taken place in the Trade Marks Act, 1999 (in force since 15^th Sept. 2003) which has replaced the earlier Trade & Merchandise Marks Act, 1958 (now repealed) includes the following:

a) It has enlarged the definition of trade mark. It now includes shape of goods, packaging and combination of colours which can adopted as a trade mark.

b) The Act provides for registration of trade mark for services in addition to goods

c) It provides for a single Register of Trade Marks with simplified procedures for registration.

d) The Act has simplified the procedure for registration of registered user (licensing of registered trade mark)

e) Provides for registration of collective marks owned by association of persons.

f) Provides for establishment of an Intellectual Property Appellate Board for speedy disposal of appeal from Registrar orders and decision

g) Transferred the final authority for registration of certification of trade marks to the Registrar.

h) Provides for enhanced punishment for the offences relating to trade marks on par with the Copyright Act, 1957 to prevent the sale of spurious goods.

i) Prohibits use of some one else’s trade marks as part of corporate names or name of business concern.

j) Provides for filing of a single application for goods or services falling in more than one class (multi class filing)

k) Increased the period of registration and renewal from 7 yrs to10 yrs

l) Has made some trade mark offences cognizable

m) The Act has amplified the powers of the court to grant ex parte injunction in certain cases

n) There are other related amendments to simplify and streamline the administration of the trade marks law and procedures in the country.

Trade Marks Rules 2002, Forms & Fee

Legal India — Tue, 09 Jun 2009 18:18:13 +0000

tmr_rules_2002

Form No.	Section or Rule	Title
1	Sections 5 and 44	Application for registration of design/Application under reciprocal arrangement.
2	Section 8(1)	Claim to proceed as an applicant or joint applicant.
3	Section 11(2)	Application for Extension of copyright.
4	Section 12(2)	Application for Restoration of lapsed design
5	Section 17(1)	Inspection of registered design
6	Section 18	Request for information when registration number is given.
7	Section 18	Request for information when registration number is not given.
8	Section 19	Petition to cancel registration of design.
9	Section 21	Notice of intended exhibition or publication of unregistered design.
10.	Section 30(3)	Application for registration of a document in the Register Design.
11	Section 30	Application for entry of name of proprietor or part proprietor in the Register
12	Section 30	Application for entry of mortgage or licence in the Register.
13.	Section 30 and rule 37	Application for entry of notification of a document in the Register.
14	Section 29	Request for correction of clerical error.
15	Section 26 and rule 41	Request for certificate.
16	Section 17(2)	Application for certified copy of registered design.
17	Section 31	Application for rectification of Register.
18	rule 15	Application for extension of time for filing priority document.
19	rule 40	Notice of opposition.
20	rules 29 and 40	Notice of intention to attend hearing.
21	Section 43	Power of authority to agents.
22	rule 31	Request to alter name or address or address for service in Register
23	Section 10	Request for entries of two addresses in theRegister