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Notification
No. G.S.R. 929(E) dated 05-12-2003
PUBLISHED
IN THE GAZETTE OF
INDIA
, EXTRAORDINARY, PART
II, SECTION 3, SUB-SECTION (i)
MINISTRY OF COMMERCE AND INDUSTRY
(Department Of Industrial Policy And Promotion )
NOTIFICATION
NEW DELHI
,
THE
5th DECEMBER, 2003
GSR 929(E).- The
following rules made by the Intellectual Property Appellate Board to regulate
its procedure, in exercise of powers conferred upon it by section 92 of the
Trade Marks Act, 1999 (47 of 1999), are hereby published for general
information:
MINISTRY OF COMMERCE
AND INDUSTRY
DEPARTMENT OF INDUSTRIAL POLICY AND PROMOTION
INTELLECTUAL PROPERTY APPELLATE BOARD
INTELLECTUAL
PROPERTY APPELLATE BOARD (PROCEDURE) RULES, 2003
In exercise of the
powers conferred by section 92 of the Trade Marks Act, 1999 (47 of 1999), the
Appellate Board hereby makes the following rules, namely :-
1.
Short title
and commencement
:-
(1)
These rules may be called The
Intellectual Property Appellate Board (Procedure) Rules, 2003.
(2)
They
shall come into force on the date of their publication in the Official Gazette.
2.
Definitions
:-
In these rules, unless the context otherwise requires,-
(a) “Act”
means the Trade Marks Act, 1999 ( 47 of 1999 );
(b)
“address
for service” means the address furnished by an applicant or appellant
or respondent or his authorised agent
or his legal practitioner at which service of summons, notices or other processes may be effected;
(c )
“agent”
means a person duly authorised by an applicant or appellant or
respondent to present application, appeal, counter statement,
reply, rejoinder, evidence or any other document
on his behalf before the Appellate Board and shall include
an agent
referred to in section 145;
(d)
“appeal”
means an appeal under section 91 of the
Trade Marks Act,1999 and includes Original
Appeal (O.A.) and Transferred
Appeal (T.A.);
(e) “appellant” means a person making an appeal to the Appellate
Board under section 91;
(f) “application”
means an application for removal of registered trade mark from the register
under section 47 or rectifying the register under section 57 or section 125;
(g) “Deputy
Registrar” means
the Deputy Registrar of the Appellate Board and includes any officer to whom the
powers and functions of the Deputy Registrar may be delegated;
(h) “fee”
means the fee prescribed under the Second Schedule of
these rules;
(i) “form”
means a form
specified under the First Schedule to
these
rules;
(j) “legal
practitioner” shall
have the same meaning as is assigned to it in the Advocates Act, 1961 ( 25 of
1961 );
(k)
“legal
representative”
means a person who in law represents the estate of the deceased person ;
(l)
“pleadings”
includes
applications or appeals, counter statements, rejoinders, replies and evidences
supplementing them and other documents permitted to be filed before the
Appellate Board ;
(m) “Registry”
means the Registry
of the Appellate Board;
(n) “section”
means a section of
the Act;
(o) “transferred
application or appeal” means an application or an appeal or other proceedings
which has been transferred to the Appellate Board under section 100;
(p) words and
expressions used and not defined in these rules but defined in the Act shall
have the meanings respectively assigned to them in the Act.
3. Form of
procedure of application or appeal :-
(1) An application
shall be filed in the Form 1 annexed to the Trade Marks
( Applications and appeals to the Intellectual Property Appellate Board ) Rules,
2003 by an aggrieved person in the Registry of the Appellate Board;
(2) An appeal from
any order or decision of the Registrar of Trade Marks shall be filed in the Forms 2,3 or
4 of the Trade Marks ( Applications and appeals to the Intellectual Property
Appellate Board ) Rules, 2003;
(3) An application or appeal sent by post shall be deemed to have been
presented before the Registry on the day it was received in the Registry.
4. Payment of fee
:-
The prescribed
fees shall be paid through bank draft payable at Chennai drawn in favour of the
Deputy Registrar, Intellectual Property
Appellate Board.
5. Language
of the Appellate Board :-
(1) The proceedings of the Appellate Board shall be conducted in English or
Hindi.
(2)
All decisions or orders of the Appellate Board shall be either in English or Hindi.
6. Application
or appeal to be in writing :-
(1) Every application, appeal, counter statement, rejoinder,
reply or other
document filed before the Appellate Board shall by typed or printed neatly.
(2)
The application or
appeal under sub-rule
(1) shall be presented
in three sets in a paper-book form along with an empty file size envelope bearing
full address of the respondent and, in case the respondents are more than one,
then, sufficient number of extra paper-books together with empty file size
envelopes bearing full addresses of each respondent shall be furnished by the
applicant or appellant.
7. Presentation and scrutiny of application or
appeal :-
(1) The Deputy
Registrar shall endorse on every application or appeal the date on which it is
presented.
(2)
If, on
scrutiny, the application or appeal is in order, it shall be duly registered and
given a serial number.
(3)
If an
application or appeal is found to be defective and the defect noticed
is formal in nature, the Deputy Registrar may allow the applicant or appellant to rectify the same in his
presence and if the said defect is not formal in nature, the Deputy Registrar
may allow the applicant or appellant fifteen days time to rectify the defect as
he may deem fit. If the application
or appeal has been sent by post and found to be defective, the Deputy Registrar
may communicate the defects to the applicant or appellant and allow the
applicant or appellant fifteen days
time from the date of receipt of the communication from the Deputy Registrar
to rectify the defects.
(4) If the
applicant or appellant fails to rectify the defects within the time allowed in
sub-rule (3), the application or
appeal shall be deemed to have been abandoned.
8. Documents to
accompany application or appeal :-
(1) Every application
shall be
in triplicate in paper-book form
and all
evidences shall be in the form of affidavits, if any.
(2) Every appeal shall be in triplicate in paper-book form and shall be
accompanied by the copies of the
order, at least one of which shall be a certified copy against which the appeal
is filed, alongwith evidences in the form of affidavits.
(3) Where a party
is represented by authorized representative, a copy of the authorization to act
as the authorized representative shall be appended to the application or appeal.
9. Notices
of application or appeal to the respondent
:-
A copy of the
application or appeal in paper-book form shall be served by the Deputy Registrar
on the respondent as soon as the same is registered
in the Registry.
10. Filing of counter statement to the application or appeal and
other documents
by the respondent
:-
(1)
After receipt of the application
or appeal filed in the prescribed Form
1, 2, or 3 of the Trade Marks (Applications and appeals to the Intellectual Property Appellate Board) Rules, 2003,
the respondent may file three complete sets of counter statement in the
prescribed Form 1 under these rules containing the reply to the application or
appeal along with documents including evidences in the form of affidavits, if
any, in paper-book form before the
Registry within two months of the service of the notice on him of the filing of
the application or appeal. A
copy of the counter statement shall be served to the applicant or appellant by
the respondent directly under intimation to the Registry.
(2) After receipt
of the appeal filed in the prescribed Form 4 of the Trade Marks ( Applications
and appeals to the Intellectual Property Appellate Board) Rules, 2003, the
respondent may file three complete sets of counter statement in the prescribed Form 2 under these rules containing the reply to the
appeal in paper-book form before the
Registry within two months of the service of the notice on him of the filing of
appeal. A copy of the counter
statement shall be served to the appellant by the respondent directly under
intimation to the Registry. The
case would then proceed for hearing.
11. Filing of reply by the
applicant or appellant
:-
After
receipt of counter statement, the applicant or appellant, may file his reply
within two months of the service of the counter statement along with evidence in
the form of affidavits, if any, in
triplicate in the Registry. A copy
of the reply shall be served on the respondent directly under intimation to the
Registry.
12. Exhibits
:-
Where
there are exhibits to affidavits, a
copy each of such exhibits shall
be sent to the other party. The
originals shall be left in the Appellate Board for inspection of the other
party. These shall be produced at
the hearing unless the Appellate Board otherwise directs.
13. Translation of
documents
:-
Where
a document in a language other than Hindi or English is referred to in any
proceedings, an attested translation thereof in Hindi or English shall be
furnished in triplicate to the Appellate Board and a copy thereof shall be
served upon the other party or parties directly under intimation to the
Registry.
14. Extension of time
:-
(1)
If the
Appellate Board
is satisfied, on an application made to it in the prescribed Form 3 under
these rules, that there
is sufficient cause for
extending the time for doing any act prescribed under these rules (not being a
time expressly provided for in the
Trade Marks Act, 1999) , whether the
time so specified has expired or not, it
may subject to such conditions as it may think fit to impose, extend the time
and inform the parties accordingly.
(2)
Nothing in sub-rule (1) shall be deemed to require the Appellate Board to
hear the parties before disposing off an application for extension of time and
no appeal shall lie from any order of the Appellate Board under this rule.
15.
Intervention by third parties
:-
Any
person other
than the
registered proprietor of a
trade mark alleging interest in a registered trade mark in respect of which an
appeal has been filed under section
91 against the order or decision of the Registrar for the removal of a trade
mark or to cancel or vary the registration and
to rectify the Register may apply in the prescribed Form 4 under these rules
for leave to intervene, stating the nature of his interest and the Deputy
Registrar may refuse or grant such leave after hearing, if so required, the
parties concerned upon such terms and conditions as he deems fit.
16. Date of hearing to be
notified :-
The
Appellate Board shall notify the parties the date and place of hearing of the
application or appeal in such manner as the Chairman may by general or special
order direct.
17. Hearing of application or
appeal :-
(1) On the day
fixed or on any other day to which
the hearing may be adjourned, the parties shall be heard by a Bench of the
Appellate Board.
(2)
In case where
the applicant or appellant does not appear at the hearing, the case will be
treated as abandoned.
18. Adjournment of
hearing
:-
A
party to the hearing may make an application in triplicate for adjournment of
the hearing in Form 5 under these rules with the
prescribed fee
fifteen days before the date of hearing alongwith the concurrence for the
adjournment from the other party. The
Appellate Board may consider the application and pass such orders as it deems
fit.
19. Award of costs by the Appellate
Board
:-
The
Appellate Board may award such costs as it deems fit to the parties having
regard to all the circumstances of the case.
20. Order to be signed and
dated :-
(1) Every order of
the Appellate Board shall be signed and dated by the Members of the Bench.
(2) The order shall
be pronounced in the sitting of the Bench.
21. Communication of
orders
:-
A
certified copy of every order passed by the Bench shall be communicated to the
parties to the proceedings.
22. Publication of the orders
:-
The
orders of the Bench as are deemed fit for publication in any authoritative
report or the press may be released for such publication on such terms and
conditions as the Chairman may lay down.
23. Review petitions
:-
(1)
A petition in
triplicate for
review of
an order
of the
Appellate Board may be made to the Registry in the prescribed Form 6
under these rules
within two
months from the date on which
the order is communicated accompanied by a statement setting forth the grounds
on which the review is sought. Where the order in question concerns more than
one respondent, sufficient extra copies of such petition and statement shall be
filed.
(2)
The Registry
shall forward
the petition
and statement
to the
respondents to the review petition.
(3)
The respondents may file
counter statement in Form 1 under
these rules within two months from the date of receipt of the
review petition and shall
forward a copy of the counter statement to the petitioner directly under
intimation to the Registry.
(4) The review petition
shall be
posted for hearing before a
Bench by the Chairman.
24. Continuation of proceedings after the death of a party, merger,
assignment, acquisition or transmission
:-
On the death of a
party or by merger, assignment, acquisition or transmission if a new party
becomes entitled for continuation of the proceedings, the proceeding would be
continued subject to filing a request with evidence in support therefor.
25. Fee for inspection of records and obtaining copies
thereof
:-
(1)
A fee of Rs.150/- for every hour or part thereof
shall be charged for inspecting
the records of a pending application or appeal or decided case.
(2)
A fee of Rs.5/- shall
be charged for providing xerox copies of each
page of the record.
26. Functions of the Deputy
Registrar :-
(1)
The Deputy Registrar shall
discharge the functions under the general
superintendence of the Chairman. He
shall discharge such other functions as are assigned to him under these rules or
by the Chairman by a separate order in writing.
(2)
He shall have the
custody of the records of the Appellate Board.
(3)
The official seal of the
Appellate Board shall be kept in the custody
of the Deputy Registrar.
(4)
Subject to any general or special directions of the Chairman, the
official seal of the Appellate Board shall not be affixed to any order, summons
or other process save under the authority in writing from the Deputy Registrar.
(5)
The official seal of the Appellate Board shall not be affixed to any
certified copy issued by the Appellate Board save under the authority in
writing of the Deputy Registrar.
27. Additional functions and duties of the Deputy
Registrar :-
In
addition to the functions and duties assigned under rule 26, the Deputy
Registrar shall have the following functions and duties subject to any general
or special orders of the Chairman, namely:–
(i) to receive all
applications, appeals, counter statements, replies and other documents;
(ii) to decide all
questions arising out of the scrutiny of the appeals and applications before
they are registered;
(iii) to require any
application, appeal, counter statement, replies presented to the Appellate Board
to be amended in accordance with the rules;
(iv) subject to the
directions of the Chairman, to fix date of hearing of the applications or
appeals or other proceedings and issue notices therefor;
(v) direct any
formal amendment of records;
(vi)
to order supply
of copies of documents to parties to proceedings;
(vii) to grant leave
to inspect the record of the Appellate Board;
(viii) to requisition
records from the custody of any court, Registrar of Trade Marks or other
authority ;
(ix) to decide
questions relating to extension of time in respect of
filing of counter statement, reply, rejoinder, etc.
28. Dress regulations for the Chairman, Vice-Chairman, Technical Member of
the Appellate Board and for the representatives of the parties :-
(i) The dress for
the Chairman, Vice-Chairman and other Members shall be white pant with black
coat and black tie or a buttoned-up black coat. If the officials are from the High Court Bench, then they shall be in
their official robes.
(ii) The dress for
the professionals who appear before the Appellate Board shall be the
professional dress, if any, and in case of other authorised representatives of
the parties, it shall be the following :-
(a)
In the case of
male, a black coat with a black tie or buttoned-up black coat over a white pant.
(b)
In the case of
female, a black coat over white or any other sober coloured saree.
(c)
All other
persons appearing before the Appellate Board shall be properly dressed.
29. Seal and emblem
:-
The official seal
and emblem
of the
Appellate Board shall be such as the Central Government may specify.
THE
FIRST SCHEDULE
Forms
and
THE
SECOND SCHEDULE
Fees
Rule
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