What the Application Must Contain

Three points that decide oppositions. The statement must cover all the goods claimed, so a user date claimed for a wide specification must be supported for all of it. The affidavit is mandatory where prior use is claimed, and rule 25(2) is not a formality. And an unsupported or inflated user claim is the first thing an opponent attacks, because it goes to the applicant's honesty as well as to priority.

Rules 27 to 30: four particular cases

Rule 27, series marks. Where the application is for marks as a series under section 15(3), copies of the representation of each mark shall accompany the application, and the Registrar, if satisfied that they constitute a series, proceeds. At any time before publication in the Journal the applicant may request division of the application on Form TM-M, and the Registrar shall divide it if satisfied that the division conforms with section 15(3), on payment of divisional fees.

Rule 28, transliteration and translation. Where a mark contains one or more words or numbers in scripts other than Hindi or English, the applicant shall provide a precise transliteration and translation of each into English or Hindi, and state the language to which they belong.

Rule 29, names of persons. Where the name or representation of any person appears on a mark, the applicant shall, if the Registrar so requires, furnish the consent in writing of that person if living, or, where the death took place within twenty years prior to the date of the application, of his legal representative; and in default the Registrar may refuse to proceed. This is the machinery for section 14, worked in chapter 640.

Rule 30, the name or description of goods on the mark. Where the name or description of goods or services appears on a mark, the Registrar may refuse to register it for any goods or services other than those named or described. Where the name or description in use varies, he may permit registration for those and other goods on the applicant giving an undertaking that the name or description will be varied when the mark is used on other goods, and the undertaking shall be included in the advertisement of the application under section 20.

Rules 31 and 32: deficiencies and acknowledgement

Rule 31. Subject to rule 10(2), where an application does not satisfy any requirement of the Act or the Rules, the Registrar shall send notice to the applicant to remedy the deficiencies, and if within one month of the date of the notice the applicant fails to remedy any deficiency so notified, the application shall be treated as abandoned.

Rule 32. Every application shall be acknowledged by a system generated electronic receipt, or by sending such a receipt to the email address provided.

Worked example

Neha Kulkarni applies for a mark for pickles. Her mark is a label carrying the word ANNAPURNA in Devanagari, a photograph of her grandmother, the words "Mango Pickle", and a red and yellow colour scheme she wants to claim.

Representation. Rule 26(1): a clear and legible representation, not exceeding 8 cm by 8 cm.

Colour. Rule 26(2): because she claims the combination of colours as a distinctive feature, she must file a reproduction in those colours. And section 10 then governs the effect of that limitation, worked in chapter 600.

Devanagari. Rule 28: a precise transliteration and translation of ANNAPURNA into English or Hindi, stating the language.

The photograph. Rule 29: if the Registrar requires it, the written consent of her grandmother if living, or of her legal representative if she died within twenty years before the application. Section 14 is the substantive provision.

"Mango Pickle" on the label. Rule 30(1): the Registrar may refuse registration for goods other than mango pickle. If Neha wants a wider specification covering lime and chilli pickle, rule 30(2) lets her give an undertaking that the description will be varied when the mark is used on other goods, and that undertaking will be published with the application.

The statement of user. Rule 25: she has sold mango pickle since 2020 and proposes to sell the others. So she claims use from 2020 for mango pickle, with an affidavit and documents, and proposed use for the rest.

A deficiency. The Registrar notices that the affidavit is unsigned and sends a notice under rule 31. She has one month. If she does not remedy it, the application is treated as abandoned, and she must file again, losing her date.

The particulars, and what each answers

What it does NOT mean

A deficiency notice is not a refusal. It is an opportunity, and the consequence of ignoring it is abandonment, not rejection on the merits. The distinction matters because an abandoned application cannot be appealed against on the merits.

Rule 29 does not make consent a precondition of filing. The applicant must furnish it "if the Registrar so requires". Section 14 is drafted the same way.

And a statement of user is not a claim to a registration date. The registration dates from the application under section 23(1), or from the convention filing under section 154. The user date fixes priority in a contest, not the date of the right.

Quick revision

r.26(1): clear and legible, not exceeding 8 cm by 8 cm. r.26(2): colour combination claimed means a reproduction in colour. r.26(3): three dimensional marks, three views, up to five further views within two months, then a specimen. r.26(4): shape or packaging, at least five views plus a description, then a specimen. r.26(5): sound, MP3 up to thirty seconds plus the notation.

r.25: a statement of user unless the mark is proposed to be used, covering the period, the person and all the goods; an affidavit and documents where use before the application date is claimed.

r.27: series marks; division on Form TM-M before publication. r.28: transliteration and translation, and state the language. r.29: consent of a living person, or of the legal representative where death occurred within twenty years. r.30: the name or description of goods on the mark, and the undertaking to vary it, published with the application.

r.31: one month to remedy a deficiency, or the application is treated as ABANDONED. r.32: electronic acknowledgement.

Test yourself

1. What must accompany an application for a shape mark? Under rule 26(4), a reproduction consisting of at least five different views of the mark and a description by words, and if those do not sufficiently show the particulars, a specimen of the goods or packaging if the Registrar calls for one.

2. When must an affidavit of use be filed? Under rule 25(2), where the use of the trade mark is claimed prior to the date of the application. The affidavit must testify to the use and be accompanied by supporting documents.

3. What happens if a deficiency is not remedied? Under rule 31, if within one month of the date of the Registrar's notice the applicant fails to remedy any deficiency notified, the application shall be treated as abandoned.

4. A mark carries a word in Tamil. What must the applicant do? Under rule 28, provide a precise transliteration and translation of the word into English or Hindi and state the language to which the word belongs.

5. A label carries the words "Coconut Oil" and the applicant wants a specification covering hair oils generally. What does rule 30 permit? The Registrar may refuse registration for goods other than coconut oil under rule 30(1). Under rule 30(2), where the description in use varies, he may permit registration for those and other goods if the applicant undertakes that the description will be varied when the mark is used on the other goods, and that undertaking is included in the advertisement of the application under section 20.