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17 July 2024
In an order dated July 1, 2024, India’s Ministry of Commerce and Industry has published the draft Trade Marks (Holding Inquiry and Appeal) Rules, 2024.
The rules mandate the electronic filing of complaints via Form-1 for contravention committed under Section 107 of the Trade Marks Act, 1999. Furthermore, it states that all communication will be made only via electronic means.
Among its other salient points are the following:
It establishes precise timelines for inquiries and appeals. Rule 4(12) provides three months for inquiry, and Rule 5(3) provides 60 days for appeal.
It allows flexibility of the timeline on reasonable grounds.
It states that all orders passed will be dated, digitally signed and posted on the website of Intellectual Property India.
For Bhavya Verma and Ancy Jacob, associates at Khurana & Khurana in New Delhi, the proposed rules are a welcome step that is much needed for several reasons.
Ancy Jacob | Associate | Khurana & Khurana | New Delhi
First of all, the rules provide a procedure for dealing with trademark contraventions under Rules 3 and 4, allowing for timely adjudication of the offences under Section 107. The flexibility provided by the rules ensures that the process is fair and adaptable to specific circumstances.
Another reason is that it eliminates ambiguities in relation to the mode of communication. Electronic communications further accelerate and ease the process of adjudication.
Jacob added that digitally signed orders published on the IP office website are another positive step. “It provides for a fairer and transparent mechanism hence enhancing the trust in the process of adjudication of the offences,” she said.
Bhavya Verma | Associate | Khurana & Khurana | New Delhi
Though the proposed rules may be considered progressive, ambiguities and drawbacks remain, according to Verma and Jacob.
Rule 2, for example, is vague in terms of the function and authority of the adjudicating officer and the appellate authority. “There is no provision specifying the representation of the complainant in the inquiry procedure and only prescribes a certain form that is needed to be filed, which can further be misused to file false and frivolous complaints,” explained Verma.
A drawback may be gleaned from Rule 6. It requires parties to be digitally literate, with access to computers and the internet to allow electronic communications and submission of documents. This could be challenging for those from developing and remote areas where internet access is a problem. “This could bring about perceived disadvantages which have dire consequences on the accessibility and fairness of the process,” revealed Jacob.
Yet another loophole is the redundancy existing in Sub-clause (1) of Section 115 of the Trade Marks Act. “Sub-clause (1) of Section 115 of the TM Act, which provides that no court shall take cognizance of an offence under Section 107 of the TM Act except in writing by the registrar or an officer authorized by him, seems to be redundant, casting doubt on the need of the said sub-clause considering that the adjudication for the offences under Section 107 would be taken up by the adjudicating officer appointed by the registrar under the recent rules,” explained Verma.
Comments and suggestions, which will be considered until August 1, 2024, may be emailed to ipr4-dipp@nic.in, or may be sent by post to:
The Secretary
Department for Promotion of Industry and Internal Trade
Ministry of Commerce and Industry
Government of India
Vanijya Bhawan, New Delhi – 110001
- Espie Angelica A. de Leon
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