The Department for Promotion of Industry and Internal Trade (DPIIT) under the Ministry of Commerce and Industry published the Draft Trade Marks (Holding Inquiry and Appeal) Rules, 2024 (hereinafter referred to as “The Rules”) in the Official Gazette on 1st July 2024. Pursuant to the powers vested by Section 157 of the Trade Marks Act, 1999, (hereinafter referred to as “the Act”) the Government issued these rules to further modify the Trade Marks Rules, 2017. The Central Government has invited objections and suggestions, if any, from any person who might be affected by the said rules, within a period of 30 days from the publication date of the rules.

Highlights of the Draft Trade Marks (Holding Inquiry and Appeal) Rules, 2024

• Digital Transformation: The Draft Trade Marks (Holding Inquiry and Appeal) Rules, 2024 consists of eight Sections and one Schedule. The Rules embrace the digitalization era, mandating every communication between the officers and the parties to be imparted through electronic means only. Every order issued under the Rules to be dated, digitally signed and uploaded on the official website of Intellectual Property India, https://ipindia.gov.in/.
• Definitions: The Rules aim to define certain terms such as Adjudicating Officer, Appellant, and Appellate Authority, as explained in Section 112A and 112B of the Act, and these provisions were added by the Jan Vishwas (Amendment of Provisions) Act, 2023.
• Complaint: Under the Rules, a complaint can be filed by any person in Form-I to the adjudicating officer on the grounds of any violation under Section 107 of the Act. Form-I is provided in the First Schedule of the Rules.
• Procedure for Holding Inquiry: The complete procedure for holding an inquiry for the purpose of adjudication under Section 112A is delineated. Firstly, the adjudicating officer must issue a notice to the concerned person, demanding them to show cause as to why they should not be held liable, within a specified period not less than 7 days.

Thereafter, if the person responds with a reason, the adjudicating officer shall require their presence, either personally or through a legal practitioner, on such date mentioned in the notice. If the person fails to show cause, then the adjudicating officer will proceed in their absence, after recording the reasons for doing so.

The person will be given an opportunity to submit a counter statement along with necessary documents and evidence in Form II. It is noteworthy that the adjudicating officer is not bound by the provisions of the Bhartiya Sakshya Adhiniyam, 2023. The provision for submitting counter-statements and evidence underscores the commitment to the principles of natural justice.

The adjudicating officer is authorized to require and enforce the attendance of any person familiar with the facts and circumstances of the case to produce any evidence or document. After considering all the evidences and documents, if he is satisfied that the person has in fact committed the contravention, he may impose penalty on that person as deemed fit. The adjudicating officer must complete the proceedings within three months from the date of issue of notice to the opposite party.

• Appeal: The Rules also provide for the appeal provisions. An appeal could be preferred in Form III to the appellate authority (defined in Section 112B of the Act), within 60 days from the date of order by any person aggrieved by the order of the adjudicating officer. After providing a reasonable opportunity of being heard to the parties, the appellate authority must pass a reasoned order within 60 days from the date of receipt of the appeal. The defined timelines help in reducing the backlog of cases, promoting a more efficient adjudication process.

Conclusion

The Draft Trade Marks (Holding Inquiry and Appeal) Rules, 2024 position India in alignment with international practices in intellectual property management. By adopting digital processes and clear procedural guidelines, India enhances its attractiveness as a destination for business and innovation, providing a robust framework for the protection of intellectual property rights. These Rules signify a forward-looking approach to trade mark management in India. By embracing digitalization, defining clear procedures, and ensuring timely adjudication and appeals, these Rules aim to create a more efficient, transparent, and fair system for the protection and enforcement of trade mark rights.

AUTHORED BY: MS. MANVI JAIN, STUDENT OF AMITY UNIVERSITY, MADHYA PRADESH