The draft patents, trademarks and geographical indication rules unveiled in January of this year have undergone significant revisions.[2] Though the amendments made vide the Jan Vishwas (Amendment of Provisions) Act, 2023, to the IP laws have yet to be brought into force, the DPIIT proceeded to notify amendments to Patents Rules, 2003, in March 2024. Through the Patents (Second Amendment) Rules, 2024, Chapter IX A, on adjudication of penalties and appeals, was introduced. These require complaints regarding contravention committed under Sections 120 (unauthorised claim of patent rights), 122 (refusal or failure to furnish information), and 123 (practice by non-registered patent agents) of the Act to be filed in Form 31. Further, the appeal against the order of adjudicating officer has to be filed in Form 32.

The procedure provided under the Patents (Second Amendment) Rules, 2024, has been retained, with slight changes, in the draft trademark and geographical indication rules notified on July 2, which are summarised below:

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

As per Rule 3 of the draft Trade Marks (Holding Inquiry and Appeal) Rules, 2024, any person may file a complaint pertaining to contravention under Section 107 of the Trade Marks Act, 1999, in Form-I through electronic means to the adjudicating officer. The said Section deals with the penalty for false representation of a trade mark as registered.

Rule 4 contains provisions pertaining to the holding of inquiry. It envisages issuance of a seven-day show cause notice to the person against whom the inquiry is to be conducted, indicating the nature of contravention alleged to have been committed. If, after considering the cause, the adjudicating officer determines that an inquiry has to be held, a notice will be issued calling for the appearance of the person for a hearing on the date fixed in the notice. At this hearing, the contravention, along with the applicable provisions, will be explained. Thereafter, an opportunity will be accorded to file a counter statement and present relevant evidence (document or evidence to be furnished in Form-II).

If the adjudicating officer is satisfied that the person has committed the contravention, he may impose a penalty under the Act via a written order mentioning the specific provisions and the reasons for the penalty imposition. Notably, the proceeding has to be completed within three months of issuance of the notice to the opposite party.

Persons aggrieved by the adjudicating officer’s order may file an appeal, under Rule 5, in Form-III, to the appellate authority within 60 days.

Other important aspects include the electronic transmission of all communications and the mandate to upload every order to IP India’s official website.

Draft Geographical Indications of Goods (Holding Inquiry and Appeal) Rules, 2024

The draft Geographical Indications of Goods (Holding Inquiry and Appeal) Rules, 2024, specifies that any person may file a complaint regarding contravention committed under Sections 38 (falsifying and falsely applying geographical indications), 39 (penalty for applying false geographical indications), 40 (penalty for selling goods to which false geographical indication is applied), 41 (enhanced penalty on second or subsequent conviction), and 42 (penalty for falsely representing a geographical indication as registered) of the Act in Form-I. The remaining provisions are more or less the same as those of the draft Trade Marks (Holding Inquiry and Appeal) Rules, 2024.

Conclusion

The draft rules signify a crucial advancement in the enforcement and management of IP rights in India. By providing structured procedures for filing complaints, conducting inquiries, and appealing decisions, the DPIIT aims to foster a more transparent and efficient system. The emphasis on electronic communication and timely resolutions reflects a modern approach which can enhance stakeholder confidence in the IP ecosystem. Overall, these initiatives not only aim to streamline processes but also to uphold the integrity of trademarks and geographical indications, ultimately contributing to a more robust IP framework in India.