Order 53 — Appeals and Applications Under the Trade Marks Act and Patents and Designs Act

(1) The rules under the general procedure rules shall apply with necessary modifications where there is no specific rules under this order.

(2) An appeal or application to the Court under this order shall be begun by originating motion.

(3) Notice of the motion by which any appeal or application is made shall be served on the Registrar.

(4) Where the Registrar refers to the Court an application made to him under the Trade Marks Act or the Patents and Designs Act, as the case may be, unless within (1) month after receiving notification of the decision to refer, the applicant makes to the Court, the application referred to it by the Registrar, the applicant shall be deemed to have abandoned the application.

(1) A notice of motion by which an appeal is brought shall state the ground of the appeal and if the appeal is against a Judgement, an order or any other decision of the Registrar, the notice shall state whether the appeal is against the whole or a part of the decision, and if against part only, shall specify the part.

(2) The notice shall be served, and the appeal entered within (30) days after the date of the order, determination or other decision against which the appeal is brought.

(3) The period specified in sub-rule (2) of this rule shall be calculated from the date in which notice of the decision or in a case where a statement of the ground for a decision was given later than that notice on which the statement was given to the appellant by the person who made the decision or by a person authorized in that behalf to do so.

(4) The filing of an appeal under this order shall not operate as a stay of proceeding on the Judgement, determination or other decision against which the appeal is brought, unless the Court by which the appeal is to be heard so orders.

Unless the Court otherwise directs, an appeal under this order shall not be heard sooner than (21) days after service of notice of the motion by which the appeal is brought.

(1) The notice of the motion by which an appeal is brought may be amended by the appellant without leave, by supplementary notice served not less than (7) days before the day appointed for the hearing of the appeal, on each person on whom the notice to be amended was served.

(2) Except with the leave of the Court hearing such appeal, no ground other than those stated in the notice of the motion by which the appeal is brought or any supplementary notice under sub-rule (1) of this rule, may be relied upon by the appellant at the hearing; but the Court may amend the ground so stated or make any other order, on such terms as it thinks just, to ensure the determination on the merits of the real question in controversy between the parties.

(1) Upon the first hearing of the motion, the Court shall give direction as to the procedure of appeal.

(2) The Court shall have power to receive further evidence on any question of fact, and the evidence may be given in such manner as the Court may direct either by oral examination in Court, by affidavit, by deposition taken before an examiner or in any other manner.

(3) The appellant shall apply to the Registrar for a signed copy of any note made to him of a proceeding and furnish the copy to the Court for the use of the Court; and in default of production of such note, or if the note is incomplete, in addition to the note, the Court may hear and determine the appeal.

(4) The Court may give any Judgement, decision or make any order which ought to have been given or made by the Registrar, and make such further or other orders as the case may require or may remit the matter with the opinion of the Court for re-hearing and determination by the Registrar.

(5) The Court may, in special circumstances, order such security to be given for the cost of the appeal as may be just.

(6) The Court shall not allow an appeal on the ground merely of misdirection, or of the improper admission or rejection of evidence, unless in the opinion of the Court, substantial wrong or miscarriage of justice has been occasioned thereby.

(7) Where an appeal is against the refusal of a trade mark application by the Registrar, the Registrar shall appear or be represented and be heard in the proceedings on the appeal.

(1) The Registrar:

(a) may refer any application; and

(b) shall refer any application where the issue refers to a question of law to the Court for determination.

(2) Any reference made under sub-rule (1) of this rule to the Court shall be made by originating motion and shall be served on every party to the proceedings to which the application relates.

(3) The notice of motion shall state the ground of the application, the question of law for determination, the contentions of the Registrar and of any other party (if any), on the question of law to which the reference relates and any other relevant matter.

(4) Unless the Court otherwise directs, the motion shall not be heard sooner than (14) days after service of notice on every party concerned.

(5) The Registrar shall appear or shall be represented and be heard in the proceeding of a matter referred to the Court.

(1) An action for infringement of a registered trade mark shall be commenced by a writ of summons as provided in order 3 of these Rules.

(2) Where in any proceeding a claim is made for relief for infringement of the right to the use of a registered trade mark, the party against whom the claim is made may, in his defence, put in issue the validity of the registration of that trade mark or may counter-claim for an order that the register of trade marks be rectified by cancelling or varying the relevant entry or both.

(3) A party to such proceeding who in his pleadings whether a defence or counter-claim disputes the validity of the registration of a registered trade mark shall serve along with the pleadings, particulars of the objection to the validity of the registration on which he relies in support of the allegation of invalidity.

(4) A party to such proceeding who counter-claims for an order that the register of trade marks be rectified shall serve on the Registrar of trade marks, a copy of the counter-claim with a copy of the particulars mentioned in sub-rule (2) of this rule; and the Registrar of trade marks shall take part in the proceeding as he may think fit but may not serve a defence or any other pleading unless ordered to do so by the Court.

(1) An application for the nullification of a patent or a design, as the case may be, shall be by petition.

(2) The respondent to a petition shall serve an answer to the petition within (21) days after service of the petition on him.

(3) A petitioner shall serve along with his petition or any other pleading, particulars of the objection to the validity of the patent or design on which he relies.

(4) The particulars given pursuant to sub-rule (3) of this rule shall state each ground on which the validity of the patent or design is questioned and shall include such particulars as shall clearly define every issue which it is intended to raise.

(5) Where the grounds stated in the particulars of objection include want of novelty or want of any inventive step, the particulars shall state the manner, time, place of every prior publication or user relied upon and, if prior user is alleged, shall:

(a) specify the name of each person alleged to have made the user;

(b) state whether the user is alleged to have continued until the priority date of the claim in question or of the invention, as may be appropriate, and, if not, the earliest and latest date on which the user is alleged to have taken place;

(c) contain a description accompanied by the drawing, where necessary, sufficient to identify the user; and

(d) where the user relates to machinery or apparatus, state whether the machinery or apparatus is in existence and where it may be inspected.

(6) Where in the case of an existing patent or design:

(a) one of the ground stated in the particulars of objection is that the invention, so far as claimed in any claim of the complete specification, is not useful; and

(b) the ground is denied, the party relying on it shall, if required by the other party, furnish particulars of the manner in which the invention is alleged not to be useful.

(1) Except with the leave of the Judge hearing any action or any other proceeding relating to a patent or a design, no evidence shall be admissible in proof of any alleged infringement, or of any objection to the validity of the patent or design, if the infringement or objection was not raised in the particulars of infringement or objection, as the case may be.

(2) In any action or any other proceeding relating to a patent or a design, evidence which is not in accordance with a statement contained in the particulars of objection to the validity of the patent or design shall not be admissible in support of an objection unless the Judge hearing the proceedings, allows the evidence to be admitted.

(3) Where any machinery or apparatus alleged to have been used before the priority date mentioned in rule 8 (5) (b) of this order is in existence at the date of service of the particulars of objections, no evidence of its user before that date shall be admissible unless it is proved that the party relying on the user offered, where the machinery or apparatus is in his possession, inspection of it to the other parties to the proceedings or where it is not, used all reasonable endeavours to obtain inspection of it for those parties.

(1) An action for infringement of a patent or a design shall be commenced by a writ of summons.

(2) In an action for infringement of a patent or a design whether or not any other relief is claimed and in any proceeding by petition for the revocation of a patent or design:

(a) the plaintiff or petitioner shall within (1) month after service of a reply, answer or after the expiration of the period fixed for service, take out a summons for directions as to the place and mode of trial returnable in not less than (21) days; and

(b) if the plaintiff or petitioner does not take out a summons in accordance with paragraph (a) of this sub-rule, the defendant or respondent, as the case may be, may do so, and the summons may be heard in chambers or in Court as the Court thinks fit.

(3) The Court hearing a summons under this rule may give directions for:

(a) the service of further pleadings or particulars;

(b) the discovery of document;

(c) securing the making of admission;

(d) the service of interrogatory and of answer to it;

(e) the taking by affidavit, of evidence relating to a matter requiring expert knowledge, and for the filing of such affidavit and the service of it on the other party;

(f) the service on the other party, by any party desiring to submit experimental proof, of full and precise particulars of the experiment prepared and of the fact which he claims to be able to establish;

(g) the making of experiment, test, inspection or report;

(h) the hearing, as a preliminary issue, of any question that may arise including any question as to the construction of the specification or any other document, or as the Court thinks necessary or expedient for the purpose of defining and limiting the issue to be tried, restricting the number of the witness to be called at the trial of any particular issue and otherwise securing that the case shall be disposed of, consistently with adequate hearing in the most expeditious manner.

(4) Where evidence is directed to be given by affidavit, the document shall attend at the trial for cross-examination unless, with the concurrence of the Court, the parties otherwise agree.

(5) On the hearing of a summons under this rule the Court shall consider, if necessary of its own motion, whether an expert shall be appointed under rule 11 of this order to assist the Court.

(6) An action for infringement or petition for the revocation of a patent or design shall not be set down for trial unless and until a summons under this rule in the action or proceedings, has been taken out and the direction given on the summons have been carried out by the time fixed by the Court for carrying it out has expired.

(1) In any proceeding under the Patents and Designs Act, the Court may at any time, and on or without the application of any party, appoint an expert to assist the Court by inquiring and reporting on any question of fact or of opinion not involving a question of law or construction as the Court may direct.

(2) The Court may nominate the expert and, where appropriate, settle any question or instruction to be submitted or given to him.

(3) Where the Court appoints an expert to inquire and report under sub-rule (1) of this rule, order 41 of these Rules shall apply in relation to his report as it shall apply in relation to a report made by a referee under that order.

In this order, “Registrar” means the Registrar of Trade Marks or the Registrar of Patents and Designs, as the case may be.