An appeal against the order or the decision of the Registrar of Trademarks may be filed before the Intellectual Property Appellate Board ('IPAB', for short). The procedure to file an appeal may be found in the Intellectual Property Appellate Board (Procedure) Rules, 2012 which has been drafted by the Department Of Industrial Policy and Promotion of the Ministry of Commerce and Industry. The following is a simplified account of the same.
An appeal against the order or decision of the Registrar must be filed within three months from the date on which the appellant has received the order or decision of the Registrar.
Note: An appeal which has been filed after three months may also be admitted if the Appellate Board is satisfied that there existed some sufficient reason because of which the appeal was not filed within three months.
The Prescribed Form
According to Section 91(3) of the Trade Marks Act, 1999:-
- An appeal to the Board must be in the prescribed form.
- It must be verified in the prescribed manner.
- It shall be accompanied by a copy of the order appealed against and the requisite fees.
Form 2 of the Trade Marks (Applications, Appeals and Fees to the Intellectual Property Appellate Board) Rules deals with the appeal against an order or decision of the Registrar of Trade Marks in respect of goods or services falling in one class. Form 3 deals with the appeal against an order or decision of the Registrar of Trade Marks in respect of goods or services falling in two or more classes.
The prescribed form also includes details such as-
- The application should be in writing
- The physical requirements of the paper that should be used- typed or printed on both sides on thick green or white paper
- The number of sets- three sets in paper-book form etc.
- The applicant is required to file documents which he intends to rely upon and an affidavit to prove the same.
- The documents to accompany appeal (in the form of an annexure) are: the notice of opposition, the counter-statement and the evidence.
The fees prescribed by the Trade Marks (Applications, Appeals and Fees to the Intellectual Property Appellate Board) Rules are:-
|Sl. No.||Form No.||Description||Fee (In INR)|
|1||Form-1||Application under section 47, 57 or 125 for removal of a trademark from the register or rectification of the register||5000|
|2||Form-2||Appeal from an order or decision of the Registrar of Trade Marks in respect of goods or services falling in one class||5000|
|3||Form-3||Appeal from an order or decision of the Registrar of Trade Marks in respect of goods or services falling in two or more class||10000|
|4||Form- 4||Petition for condoning delay in filing appeal||2500 (for delay per month or part thereof)|
Where the parties are not representing themselves, should every appeal be accompanied by:
- A vakalath, in case of lawyers, which has been duly executed in the lawyer's name
- A letter of authorization, in case of patent or trademark agents
Verification of the Appeal or Application
Every application or appeal should be verified at the foot by the party or by one of the parties
Presentation and Scrutiny
Every application shall be endorsed by the Deputy Registrar on the date on which the application is presented. If the application is in order, it shall be duly registered and given a serial number. If the application is found to be defective, the applicant shall be given time to remedy the defect. If he fails to do so, the application shall be deemed to have been abandoned.
- A copy of the application is to be submitted by the Deputy Registrar on the respondent after the same has been numbered.
- After the receipt of the application, the respondent may file two complete sets of the counter-statement
- The requirements of the counter-statement, the evidence of the respondent etc. is the same as that of the appellants
Note: The parties to an appeal are not entitled to produce additional evidence except in accordance with Order XLI Rule 27 of the Code of Civil Procedure
The Place of Hearing
The place of hearing shall be the place having jurisdiction under Rule 2(m)- the principal seat at Chennai or at Delhi, Mumbai, Kolkata or Ahmedabad, where the Head Office or the branch office of the Trade Mark Registry is located.
Day of the Hearing
The matter shall be heard by the Appellate Board on the day assigned. If one of the parties does not appear, the case may be decided on merits, decided ex-parte or may be dismissed.
In the case of a dismissed or an ex-parte decision, the IPAB may restore or set aside the decision based on a petition filed within thirty days from the date of the order (or on the terms that the Board sees fit).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.