Revised Trade Marks Rules, 1963
PART – I
1. Short title and commencement.
5. Size, etc. of documents
6. Signature of documents
7. Service of documents
8. Particulars of applicant and other persons
9. Address for service
11. Classification of goods
12. Form of application
13. Application to be confined to one class
14. Statement of user in applications
15. Representation of marks
16. Additional representation
17. Representations to be durable
18. Specimens of the mark in exceptional cases
19. Series of trade marks
22. Acknowledgement of receipt of application
24. Objection to acceptance
25. Decision Registrar
26. Application for registration and proceedings relating thereof
27. Manner of advertisement
28. Wood block or Electro-type
29. Advertisement of series
30. Notice of opposition
31. Particulars to be given in the notice
33. Evidence in support of opposition
34. Evidence in support of application
35. Evidence in reply by opponent
36. Further evidence
39. Security for costs
40. Procedure for giving notice
41. Entry in Register
42. Associated marks
43. Death of applicant before registration
44. Certificate or registration
DISSOLUTION OF ASSOCIATED MARKS
45. Application for dissolution
46. Renewal of registration
47. Notice before removal of trade mark from register
48. Advertisement of non-payment
49. Removal of trade mark from register and restoration
50. Notice and advertisement of renewal and restoration
51. Application for entry of assignment or transmission
52. Particulars to be stated in application
53. Case accompanying application
54. Proof of title
55. Advertisement of assignment without goodwill of trade mark in use
56. Application for entry of assignment without Goodwill
57. Separate registrations
58. Registrar’s certified or approval as to certain assignments and transmissions
59. Registration of Assignment to a company under section 36
60. Entry and notification
61. Registered proprietor’s application to very entry
62. Cancellation of the registration of registered user
63. Notification and hearing
64. Registered user’s application under section 47 (2)
65. Application to rectify, or remove a trade mark from the register
66. Further procedure
67. Intervention by third parties
68. Alteration of address in register
69. Application under Section 47
70. Advertisement of certain applications
71. Alteration of registered trade marks
72. Advertisement before decision and opposition
73. Advertisement, Illustration
74. Decision, Advertisement, Notification
75. Re-classification in respect to existing registration
76. Extension of time
77. Exercise of discretionary power of Registrar
78. Notification of decision
79. Correction of irregularity in Procedure
80. Costs in uncontested cases
81. Scale of costs
82. Certificates other than under section 16 (2).
83. Certificate for use in obtaining registration abroad
84. Time for appeal
85. Certificates of validity to be noted
86. Inspection of register, etc.
87. Request to Registrar for search
88. Distribution of copies of Journal and other documents
89. Applications made to the Court to be served on the Registrar
SPECIAL PROVISIONS FOR CERTIFICATION
90. Application for registration and proceedings relating thereto
91. Case accompanying application
92. Opposition to registration of certification trade marks
93. Rectification of certification trade mark entries
94. Alteration of regulations relating to certification trade marks
95. Consent of Central Government to assignment or transmission of certification trade mark
SPECIAL PROVISIONS FOR TEXTILE MARKS
97. Rules to apply to textile marks
98. Textile Marks
99. Textile goods
100. Application to register word mark
101. Application to register letters or numerals
102. Items of textile goods
103. Grouping of items of the Fifth Schedule
104. Entry in the Refused Textile Marks List
105. Continuance of a mark in the Refused Textile Marks List
106. Notice of applicant
107. Amendment of the Refused Textile Marks List
109. Application for registration, additional representation
Rules under sub-section (2) of section 64
111. Non-registrability of certain marks
112. Marks likely to deceive or to cause confusion
113. Exception in the case of ‘old’ marks
115. Tenure of office of members
116. Substitution of members
117. Co-option of members
119. Manner of consultation
120. Facts of a case for advice
121. Time-limit for giving advice
122. Further information
123. Presiding at Meetings
124. Decision by voting
125. Record of meetings
REGISTRATION OF TRADE MARKS AGENTS
127. Register to Trade Marks Agents
128. Eligibility for registration
129. Persons debarred from registration
130. Manner of making application
131. Applications for registration as a Trade Marks Agent
132. Procedure on application
133. Certificate of registration
134. Continuance of a name in the Agents’ Register
135. Removal of agent’s name from Agents’ Register
136. Restoration of removed names
137. Alteration in the Agents’ Register
138. Publication of the Agents’ Register
RULES RELATING TO BRANCH REGISTRY
139. (1) The Central Government may establish a Branch Registry at any place in the territory to which the Act extends.
140. Applications etc
141. Inspection of copy of Register, etc
142. Hearing at the Branch Registry
143. Repeal and savings
Revised Trade Marks Rules, 1963
10th September 1963
In exercise of the powers conferred by section 84 of the Trade Marks Act, 1940 (V of 1940), the Government of Pakistan is pleased to publish the following Trade Marks Rules. They will come into effect immediately: –
1. Short title and commencement.–
(1) These rules may be called the Revised Trade Marks Rules, 1963.
(2) They shall come into force at once.
2. Definitions. : —
In these rules, unless there is anything repugnant in the subject or context, –
a. “Act” means the Trade Marks Act, 1940;
b. “Branch Registry” means a Branch of the Trade Marks Registry established under rule 139;
c. “form” means a form set forth in either the Second or the Third Schedule to these rules;
d. “Journal” means the Trade Marks Journal;
e. “section” means a section of the Act;
f. “specification” means the designation of goods in respect of which a trade mark, or a registered user of a trade mark, is registered or proposed to be registered.
(1) The fees to be paid in respect of applications and registration and other matters under the Act shall be those specified in the First Schedule to these rules, hereinafter referred to as the prescribed fees.
(2) (a) Fees may be paid in cash at the Trade Marks Registry, or may be sent by money order or postal order or cheque, payable to the Registrar.
a. Cheques not carrying the correct addition for commission and other cheques on which the full value cannot be collected in cash within the time allowed or payment of the fee shall be accepted only at the discretion of the Registrar.
b. Stamps shall not be received in payment of fees.
The forms set forth in the second and the Third Schedules to these shall be used in all cases to which they are applicable and may be modified rejected by the Registrar to meet other cases.
6. Size, etc. of documents.–
(1) Subject to any other direction that given by the Registrar, all applications, notices, statements or other except trade marks authorised or required by the Act or these rules to be left with or sect to the Trade Mark Registry or left with or sent to the Registrar or the Central Government shall be written, lithographed or in the English language in large and legible characters with deep permanent upon strong paper, and, except in the case of affidavits, on one side only, of approximately 13 inches by 8 inches, and shall have no the left hand part to a margin of not less than one inch a half.
(2)Duplicate documents including trade marks shall be field at the trade mark Registry, if at any time required by the Registrar.
6. Signature of documents. : —
(1) A document purporting to be sing a partnership shall be signed by at least one of the partners and a document purporting to be signed by a body corporate shall be signed by a director or by the secretary or other principal officer of the body corporate. A document purporting to be signed by any other association of person shall be signed by President, Chairman or Principal secretary of the Association or by any person who appears to the Registrar to be duly qualified. The capacity in an individual signs a document on behalf of a partnership or a body or other association of persons shall be stated below his signature.
(2) Signatures to any documents if written in characters other than Roman, or if not clearly legible shall be accompanied by a translation in English and in block capitals.
7. Service of documents. : —
All applications, notices, statements, papers having representations affixed thereto, or other documents authorized or required by the Act or these rules to be made, left or sent, at or to the Trade Marks Registry or with or to Registrar or the Central Government or any person may be sent through the post by a prepaid letter; any application or any document so sent shall be deemed to have been made, left or sent at the time when the letter containing the same would be delivered in the ordinary course of post. In proving such sending, it shall be sufficient to prove that the letter was properly addressed and put into the post.
8. Particulars of applicant and other persons. : —
(1) Names and addresses of applicant and persons shall be given in full, together with their nationality and such particulars, if any, of caste or calling as are necessary for identification. In the case of a firm, the full name and nationality of every partner thereof shall be stated.
(2) The address given shall in all cases be as full as possible, for the purpose of enabling any person easily to find the place of trade or business of the person whose address is given.
(3) In the case of a body corporate or firm or an association the country of incorporation and the nature of registration, if any, as the case may be, shall given.
9. Address for service. : —
(1) Every applicant or opponent in any proceeding under the Act or these rules, who does not reside or carry on business within
(2) Every person who is registered as a proprietor or registered user of a trade mark or who is about to be registered as such may, if he so desire, give upon From TM-50 an address for service in Pakistan for entry in the register, and such address in the register may be treated as the actual address of that person for purposes connected with the trade marks. All applications on form TM_50 rule shall be signed by the person about to be, or by an agent expressly him for the purpose of such application.
(3) In any case in which no address for service is entered in the register, the may treat the trade or business address of the registered proprietor registered user of a trade mark as therein entered as his address for service for purposes connected with the trade mark.
(4) By written communication addressed to a person as aforesaid at an address given by him or at an address treated by the Registrar as his address shall be deemed to be properly addressed.
(5) Unless an address for service as required in sub-rule (1) is given, the Registrar shall be under no obligation to send any notice that may be required by the Act or these rules, and no subsequent order or decision in the proceedings shall be called in question on the ground of any such non-service of notice.
10. Agency. : —
The authorization of an agent for the purpose of section 80 executed on form TM-48;
CHAPTER II – Classification
10. Classification of goods. : —
For the purposes of the registration of trade marks and of these rules, goods shall be classified in the manner specified in the Schedule to these rules.
APPLICATION FOR REGISTRATION
12. Form of application. : —
An application to the Registrar for the registration of a trade mark shall be signed by the applicant. For trade mark other than a defensive trade mark, the application shall be made on form TM-1, if in respect of non-textile goods.
13. Application to be confined to one class. : —
(1) Every application for the registration of a trade mark shall be in respect of goods in one class only of the Fourth Schedule to these rules.
(2) Separate applications. : — Applications for the registration of the same trade mark in different class shall be treated as separate and distinct applications, and in all cases where a trade mark is registered under the same official number of goods in more than one class, whether on conversion of the specification under rule 75 or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for all the purposes of the Act.
14. Statement of user in applications. : —
An application to register a trademark shall contain a statement of the period during which, and the person by whom, it has been used in respect of the goods mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.
15. Representation of marks. : —
Every application for the registration of a trade mark, and where additional copies of the application are required, every such copy shall contain a representation of the mark in the space provided on the application form for that purpose. Where the representation exceeds such space in size, the representation shall be mounted upon linen, tracing cloth or such other material as the Registrar may consider suitable. Part of the mounting shall be affixed in the space aforesaid and the rest may be folded.
16. Additional representation. : —
Every application for the registration of a trade mark shall, except as hereinafter provided, be made in duplicate and shall be accompanied by six additional representations of the mark. The representations of the mark on the application and its duplicate and the additional representations shall correspond exactly with one another. The additional representations shall in all cases be noted with all such particulars as may from time to time be required by the Registrar. Such particulars shall, if required, be signed by the applicant.
17. Representations to be durable. : —
All representations of trade marks must be of a durable nature and each additional representation required to be filed with an application for registration shall be mounted on a sheet of strong paper of the size of approximately 13 inches by 8 inches, leaving a margin of not less than one inch and a half on the left hand part of the sheet.
18. Specimens of the mark in exceptional cases. : —
Where a representation of a trade mark cannot be given in the manner set forth in rule 17, a specimen or copy of the trade mark may be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient.
19. Series of trade marks. : —
Where application is made for the registration of a series of trade marks under sub-section (3) of section 11 copies of representations of each trade mark of the series shall accompany the application in the manner set forth in rules 15 and 16.
20. Transliteration. : —
Where a trade mark contains a word or words in characters other than Roman, there shall, unless the Registrar otherwise directs, be endorsed on the application form, and on each of the accompanying representations, a sufficient transliteration of the Registrar of each of such words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant.
21. Translation. : —
Where a trade mark contains a word or words in a language other than English, the Registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall be enclosed and signed as aforesaid.
PROCEDURE ON RECEIPT OF APPLICATION FOR REGISTRATION OF A
of receipt of application. : — .
22. Search. : —
Upon receipt of an application for the registration of a trade mark in respect of any goods the Registrar shall cause search to be made amongst the registered marks and amongst the pending applications for the purpose of ascertaining whether there are on record in respect of the same goods or description of goods any marks identical with the mark sought to be registered or so nearly resembling it as to render it likely to deceive or cause confusion and the Registrar may cause the search to be renewed at any time before the acceptance of the application, but shall not be bound to do so.
23. Objection to acceptance–Hearing. : —
(1) If, on consideration of the application, and of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish the Registrar has any objection to the acceptance of the application or process to accept it subject to such conditions, amendments, disclaimers, modifications or limitations as he may think right to impose, the Registrar shall communicate such objection or proposal in writing to the applicant.
(2) Unless within three months from the date of the communication mentioned in sub-rule (1), the applicant alters his application according to the proposal aforesaid, or send his observations to the Trade Marks Registry or applies for a hearing, the application shall be deemed to have been abandoned and no further reference to the applicant shall be necessary.
(3) An application which is treated as abandoned under sub-rule (2) or sub-section (3) of section 16 may be restored to the file on sufficient cause being shown to the satisfaction of the Registrar and in application to that effect being made in form TM-56 accompanied by a statement of the case.
24. .Decision Registrar. : —
(1) The decision of the Registrar at a hearing under rule 24, or without a hearing if the applicant has duly communicated his observations in writing, and has stated that he does not desire to be heard, shall be communicated to the applicant in writing, and if the applicant intends to appeal from such decision he may within one month from the date of such communication apply on form TM-15 to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.
(2) In a case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues a statement in writing under sub-rule (1).
(3) The date when such statement is spent shall be deemed to be the date of the Registrar’s decision for the purpose of appeal.
DEFENSIVE TRADE MARKS
26. Application for registration and proceedings relating thereof. : —
An application for the registration of a defensive trade mark under section 38 shall be made on form TM-3 and shall be accompanied by a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by an affidavit made by the applicant. The applicant may send with this affidavit or subsequently such other evidence as he may desire to furnish, and the Registrar shall consider the whole of the evidence before deciding the application. In all other respect and where they are appropriate and it is not otherwise stated, these rules shall apply to applications for the registration of ordinary trade marks.
ADVERTISEMENT OF APPLICATION
27. Manner of advertisement. : —
An application for the registration of the trade mark required or permitted to be advertised by sub-section (1) of section 15 shall be advertised in the Journal during such time and in such manner as the Registrar may direct. In the case of an application with which the Registrar proceeds only after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trade mark or of another applicant the word “By Consent” shall appear in the advertisement. If no representation of the trade mark be included in the advertisement of the application, the Registrar shall mention in such advertisement the place or places where a specimen or representation of the trade mark may be inspected.
28. Wood block or Electro-type. : —
For the purposes of advertisement in the Journal, the applicant may, at the appropriate time, supply or be required to supply a printing block (or more than one, if necessary) of trade mark satisfactory to the Registrar, of such dimensions as may from time to time be approved or directed by the Registrar, or shall supply such information or other means of advertising the trade mark as a may be required by the Registrar, and the Registrar, if dissatisfied with the printing block supplied by the applicant or his agent, may required a fresh block before proceeding with the advertisement. Any printing block so sent to the Registrar shall be required by the Trade Marks Registry.
29. Advertisement of series. : —
Where an application relates to a series of trade marks differing from one another in respect of the particulars mentioned in sub-section (3) of section 11, the applicant may be required to supply a printing block (or more than one, if necessary) satisfactory to the Registrar of any or of each of the trade marks constituting the series, or the Registrar may, if he thinks fit, insert with the advertisement of the application a statement of the manner in which the several trade marks differ from one another.
OPPOSITION OF REGISTRATION
30. Notice of opposition. : —
The time within which a notice of opposition to the registration of a trade mark may be given, shall be four months from the date of advertisement of the application for registration, in the Journal. Such notice shall be on from TM-5.
31. Particulars to be given in the notice. : —
The notice shall be given in duplicate, and shall include a statement of the grounds upon which the opponent objects to the registration. If registration is opposed on the ground that the trade mark in question resembles any marks already on the register, the registration numbers of such trade marks and the dates of the Journals in which they have been advertised shall be set out.
32. Counter-statement. : —
The counter-statement required by sub-section (3) of section 15 shall be sent in duplicate on form TM-6 within two months from the receipt by the applicant of the duplicate notice of opposition. The applicant shall also set out in the counter-statement what facts, if any, alleged in the notice of opposition, are admitted by him.
33. Evidence in support of opposition. : —
(1) Within two months from the receipt by the opponent of the duplicate counter-statement the opponent shall either leave with the Registrar such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar in writing that he does not desire to adduce any evidence in support of his opposition. He shall deliver to the applicant copies of any evidence that he leaves with the Registrar under this sub-rule.
(1).If an opponent takes no action under sub-rule within the time therein prescribed, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition.
34. Evidence in support of application. : —
Within two months from the receipt by the applicant of the copies of affidavits in support of the opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof.
35. Evidence in reply by opponent. : —
within one month from the receipt by the opponent of the copies of the applicant’s affidavits, the opponent may leave with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies thereof. This evidence shall be confined to matters strictly in reply.
36. Further evidence. : —
No further evidence shall be left on either side, but, in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either the applicant or the opponent to leave any evidence upon such term as to costs or otherwise as he may think fit.
37. Exhibits. : —
Where there are exhibits to affidavits filed in an opposition, copies or impressions of such exhibits shall be sent to the other party on his request and at his expense, or, if such copies or impressions cannot conveniently be furnished, the original shall be left with the Registrar in order that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.
38. Hearing. : —
Upon completion of the evidence the Registrar shall give notice to the parties of a date he will hear the arguments in the case. Such appointment shall be for a date at least one month after the date of the notice, unless the parties consent to a shorter notice. Within in fourteen days from the receipt of the notice any party who intends to appear shall so notify the Registrar on From TM-7. Any party who does not desiring to be heard and the Registrar may Act accordingly.
39. Security for costs. : —
The security for cost which the Registrar may require under sub-section (5) of section 15, may be fixed at any amount which he may consider proper, and such amount may be further enhanced by him at any stage in the opposition proceedings.
NOTICE OF NON-COMPLETION OF REGISTRATION
40. Procedure for giving notice. : —
The notice which the Registrar is required by sub-section (3) of section 16, to give to an applicant, shall be sent to applicant at his trade or business address or address for service on form O-1, but if the applicant has authorised an agent for the purpose of the application, the notice shall be sent to the agent and a duplicate thereof to the applicant. The notice shall specify twenty-one days time from the date thereof or such further time as the Registrar may allow, for completion of the registration.
41. Entry in Register. : —
(1) As soon as may be after the expiration of fourth months from the date of the advertisement in the Journal of any application for the registration of a trade mark, Registrar shall, subject to any opposition and the determination thereof, and to the provisions of sub-section (1) of section 16 and upon payment of the prescribed fees on From TM-11, enter the trade mark in the resister.
(2) The entry of a trade mark in the register shall specify the date of the registration, the goods in respect of which it is registered, and all particulars required by sub-section (1) of section 4, including both the trade or business address and the address for service of the applicant (if an application on form TM-50 for the entry thereof has been accepted), particulars of the trade, business profession, occupation, or other description of the proprietor, particulars of any undertaking by the proprietor entered in the form of the proprietor, particulars affecting the scope of the registration or the rights conferred by the registration, and such other particulars as are prescribed.
(3) In the case of an application as aforesaid which the Registrar accepts only after the applicant has lodged the written consent to the propose registration, of the registered proprietor of another trade mark or another applicant for registration, the entry made under this rule in the register shall state that it is “By Consent” and shall give the number of the previous registration or application for registration.
42. Associated marks. : —
Where a trade mark is registered as associated with any other marks, the Registrar shall note in the register in connection with the first –mentioned mark the registration numbers of the marks with which it is associated and shall also note in the register in connection with each of the associated marks the registration number of the first-mentioned mark as being a mark associated therewith.
43. Death of applicant before registration. : —
In case of death of any applicant for the registration of a trade mark after the date of his application and before the trade mark has been entered in the register, the Registrar may, on proof of the applicant’s death and of the title of another person to the ownership of the trade mark, enter in the register the name, address and description of that person as the proprietor of the trade mark.
44. Certificate or registration. : —
The certificate of registration of a trade mark to be issued by the Registrar under sub-section (2) of section 16 shall be in form O-2 with such modifications as the circumstances of any case may require, and the Registrar shall annex a copy of the trade mark to the certificate.
CHAPTER III DISSOLUTION OF ASSOCIATED MARKS
45. Application for dissolution. : —
An application under sub-section (4) of section 12 shall be made on form TM-14 and shall include a statement of the grounds of the application.
RENEWAL OF REGISTRATION AND RESTORATION
46. Renewal of registration. : —
An application for a renewal of the registration of a trade mark shall be made of form TM-12 and may be made at any time not more than six months before the expiration of the last registration of the trade mark.
47. Notice before removal of trade mark from register. : —
At a date not less than one month and not more than two months before the expiration of the last registration of a trade mark, if no application From TM-12 for renewal of the registration together with the prescribed fee has been received, the Registrar shall notify the registered proprietor in writing on From O-3 of the approaching expiration at his trade or business address as well as address for service entered in the register.
48. Advertisement of non-payment. : —
If at the expiration if the last registration of a trademark the renewal fee has not been paid, the Registrar shall advertise the fact forthwith in the Journal and if within four months of that advertisement the renewal fee on form TM-12 together with prescribed additional fee is received, he shall renew the registration without removing the mark from the register.
49. Removal of trade mark from register and restoration. : —
(1) Where, at the expiration of four months from the advertisement mentioned in the last foregoing rule, the fees therein referred to have not been paid, the Registrar may remove a mark from the register, and the removal shall take effect from the expiration of the last registration.
(2) The mark has been removed from the register, the Registrar may, on receive of a request made in that behalf on form TM—13, restore the mark to the register on being satisfied that it is just so to do, and upon such conditions as he may think fit to impose.
50. Notice and advertisement of renewal and restoration. : —
Upon the renewal or restoration and renewal of a registration, a notice to that effect shall be sent to the registered proprietor and the renewal or restoration and renewal shall be advertised in the Journal.
ASSIGNMENT AND TRANSMISSION
51. Application for entry of assignment or transmission. : —
An application to register the title of a person who becomes entitled by assignment or transmission to a registered trade mark shall be made on formTM-24 or TM-23 according as it is made by such person alone or conjointly with the registered proprietor.
52. Particulars to be stated in application. : —
An application under rule 51 shall contain full particulars of the instrument, if any, under which the applicant or in the case of a joint application, the person other than the registered proprietor claims to be entitled to the trade mark; and such instrument or a duly certified copy thereof shall be produced at the Trade Marks Registry, for inspection at the time of application, The Registrar may required and retain an attested copy of any instrument produced for inspection in proof of title, but such copy shall not be open to public inspection.
53. Case accompanying application. : —
Where a person applying under rule 51 for registration of his title does not establish his claim under any document or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Registrar otherwise directs, either upon or with the application, state a case setting forth the full particulars of the facts upon which his claim to be proprietor of the trade mark is based, and showing that the trade mark has been assigned or transmitted to him. If the registrar so requires, the case shall be verified by an affidavit on form TM-18.
54. Proof of title. : —
The Registrar may call upon any person who applies to be registered as proprietor of a registered trade mark to furnish such proof or additional proof of title as he may require for his satisfaction.
55. Advertisement of assignment without goodwill of trade mark in use.
(1) An application for directions under section 33 shall be made on form TM-20 and shall state the date on which the assignment was made. The application shall give particular of the registration in the case of a registered trade mark, and in the case of an unregistered mark, shall shoe the mark and give particulars of the registered trade mark that has been assigned therewith in accordance with section 30. The Registrar may call for any evidence or further information and if he is satisfied with regard to the various matter he shall issue directions in writing with respect to the advertisement of the assignment.
(2) The Registrar may refuse to consider such an application in an case to which section 32 applies, unless his approval has been obtained under the said section and a reference identifying the Registrar’s notification of approval is included in the application.
(3) A request for an extension of the period within which the application may be made shall be on form TM-21 and may be made at any time before or during the period for which extension can be allowed. The extension of the period which the Registrar may allow shall not exceed three months.
56. Application for entry of assignment without Goodwill. : —
An application under rule 51 relating to an assignment of a trade mark in respect of any goods shall state-
(a) whether the trade mark was, at the time of the assignment, used in a business in any of those goods; and
(b) whether the assignment was made otherwise than in connection with the goodwill of that business, and if both those circumstances subsisted, then the applicant shall leave at the Trade Marks Registry a copy of the directions to advertise the assignment, obtained upon application under rule 55, and such proof, including copies of advertisements or otherwise, as the Registrar may require, to show that his directions have been fulfilled, he shall not proceed with the application.
57. Separate registrations. : —
Where pursuant to an application under rule 51 and as the result of a division and separation of the goods of a registration or a division and separation of places or markets, different persons become registered separately under the same registration number as subsequent proprietors of trade mark, each of the resulting separate registration in the names of those different persons shall be deemed to be separate registration for all the purposes of the Act.
58. Registrar’s certified or approval as to certain assignments and transmissions. : —
Any person who desire to obtain the Registrar’s certificate under sub-section (2) of section 31 or his notification of approval under section 32 shall send to the Registrar with his application on form TM-17 or form TM-19, as the case may be, a statement of case in duplicate setting out the circumstances and a copy of any instrument or proposed instrument effecting the assignment or transmission. The Registrar may call for any evidence or further information that he may consider necessary and the statement of case shall be amended if required in include all the relevant circumstances and shall, if required, be verified by an affidavit. The Registrar, after hearing (if so required) the applicant and any other person whom the registrar may consider to be interested in the transfer, shall consider the matter and issue a certificate thereon or a notification in writing of approval or disapproval thereof, as the case may be. Where a statement of case is amended, two copies thereof in its final form shall be left at the Trade Marks Registry. The Registrar shall seal a copy of the statement of case in its final form to the certificate or notification.
59. Registration of Assignment to a company under section 36. : —
For the purposes of sub-section (3) of section 36, the period within which a company may be registered as the subsequent proprietor of a registered trade mark, upon application made under rule 51 shall be six months from the date of advertisement in the Journal of the Registration of the trade mark or such further period not exceeding six months as the Registrar may allow, on application being made on form TM-25 by the applicant for registration of title or the registered proprietor, as the case may be, at any time before or during the period for which the extension can be allowed.
60. Entry and notification. : —
(1) An application to the Registrar for the registration under section 41 of an person as a registered user of a registered trade mark shall be made by that person and the registered proprietor on form TM-28.
(2) The entry of a registered user in the register shall set forth, in addition to the particular mentioned in sub-section (1) of section 41, his address for service, if an application by him on form TM-50 therefor has been accepted, and the date on which the entry is made. A notification in writing of the registration of a registered user shall be sent to the registered proprietor of the trade mark, to the registered user and to every other registered user whose name is entered in relation to the same registration of a trade mark and shall be inserted in the Journal.
61. Registered proprietor’s application to very entry. : —
An application by the registered proprietor of a trade mark for the variation of the registration of a registered user of that trade mark under clause (a) of section 42 shall be made on form TM-29 and shall be accompanied by a statement of the grounds on which it is made and, where the registered user in question consents, by the written consent of that registered user.
62. Cancellation of the registration of registered user. : —
(1) An application for the cancellation of the registration of a registered user under clause (b) or clause (c) of section 42 shall be made on form TM-30 or form TM-31, as the case may be, and shall be accompanied by a statement of the grounds on which it is made.
(2) In case of the registration of a registered user for a period, in accordance with clause (d) of sub-section (1) of section41,the Registrar shall cancel the entry of the registered user at the end of that period. Where some or all of the goods are omitted from those in respect of which a trade mark is registered, the Registrar shall at the same time omit them from those specifications of registered users of the trade mark in which they are comprised. The Registrar shall notify every cancellation or omission under this sub-rule to the registered users whose permitted use is effected thereby and to the registered proprietor of the trade mark.
63. Notification and hearing. : —
The Registration shall notify in writing applications under section 42 to the registered proprietor and each registered user (not being the applicant) under the registration of the trade mark. Any person so notify who intends to intervene in the proceeding, shall within one month of the receipt of such notification give notice to the Registrar on form TM-32 to that effect and shall send therewith a statement of the grounds of his intervention. The registrar shall thereupon serve or cause to be served copies of such notice and statement on the other parties viz., the applicant, the registered proprietor, the registered user whose registration is in suit, and any other registered user who intervenes. Any such party may, within such time or times as the Registrar after giving the party an opportunity of being heard may accept or refuse the application or accept it subject to any conditions, amendments, modifications or limitations he may think right to impose.
64. Registered user’s application under section 47 (2). : —
Applications under sub-section (2) of section 47 shall be made on form TM-16 or form TM-33 or form TM-34 as may be appropriate by a registered user of a trade mark or by such person as may notify the Registrar that he is entitled to Act in the name of a registered user and the Registrar may require such evidence by affidavit or otherwise as he may think fit as to the circumstances in which the application is made.
APPLICATION FOR ALTRATION OR RECTIFICATION OR REGISTER
65. Application to rectify, or remove a trade mark from the register. : —
An application to Registrar under section 37, 38 or 48 for the making, expunging or varying of any entry in the register shall be made on form TM-26 and shall be accompanied by a statement meeting out fully the nature of the applicant’s interest, the facts upon which he bases upon which he bases his case and the relief which he seeks. Where the application is made by a person who is not the registered proprietor of the trade mark in question, the application and the statement aforesaid shall be left at the Trade Mark Registry in duplicate. The duplicate. The duplicate copies shall be transmitted forthwith by the Registrar to the registered proprietor.
66. Further procedure. : —