NEW TRADE MARK RULES 2017 IN INDIA
The important features of the new Trade Mark Rules 2017 include:
The Government of India notified Trademark Rules, 2017 with effect from 06 March 2017 with a view to simplify and speed up the entire process of trademark administration with a strong focus towards digitalizing the entire administration have been provided for digital filing and electronic communication. These Rules detail the working of Trademark office along with Trademarks Act, 1999.
Some of the salient features of the new Rules are:
Classification of Applicants
Under the new rules the applicants are now divided into two major parts. There is a simple separation of the small enterprises, individuals, and startups from other companies, firms and businesses. With the changes in Rules, the applicant is categorized in four types, i.e., individual, startup, small enterprise and fourth type cover all types of applicants who are not covered under the said three types. Certain benefits are being provided to individual, startup and small enterprise in the form of reduced fees.
The Trade Mark Rules 2017 (“Rules”) have incorporated the concept of ‘small enterprise’ and ‘start-up’ as part of the rules. If an entity qualifies as a ‘small enterprise’ or ‘start up’ or Individuals, it is eligible to pay lower fees for an application to register a trade mark. The hike in fees for the registration of the trademark has almost gone up to 50 % on the existing charge that was taken.
However, it is pretty interesting to note that such relief has been given only at the stage of filing of an application.
As digitization stepping in our routine lives, the trademarks registry has also accepted the digital route by giving a 10 % discount on e-filing of any application /form for registration of a trademark. The discount shall mean that the registry has taken up the task of going digital and also promoting the digitization of long and tedious legal procedures.
An amendment in forms made especially Trademarks Attorneys and Agents, a reason to be happy about. Earlier there were an exhaustive number of forms for various proceedings under the trademarks law, but the amendment of March 6th, 2017 in the rules of trademarks have reduced the number of forms and alphabetized the forms. The 75 forms in the old rules have been replaced by forms such as TM-A, TM-O, TM-R, TM-P, TM-U, TM-C, TM-M, and TM-G. This is meant to make the process for obtaining trademarks more uniform and less chaotic.
Form TM-R: Application for Renewal/Restoration of registration of a trade mark or for payment of surcharge towards the renewal
orm TM-P: Application for Post registration changes in the trade marks
Form TM-U: Application for registration of Registered User/Variation of Registered User/Cancellation of Registered Users and Notice of intention to intervene in proceeding in cancellation/variation
Form TM-C: Application for search and certificate under Section 45(1) of the Copyright Act, 1957
Form TM-M: Application/Request for any miscellaneous function in respect of a trade mark Application/Opposition/Rectification under the Trade Marks Act
Form TM-G: Trade Marks Agent Registration/Renewal/Restoration/Alteration
Statement of user:
As per the new Trade Marks Rules, besides giving a statement of the period (if the mark has been used) in the format [DD/MM/YYYY], it is mandatory to file an affidavit testifying to the use of mark in India, along with supporting documents where the use of the trade mark is claimed prior to the date of application.
Service of Documents
New Trade Marks Rules, 2017, specifically mentions the Email as mode of service for every kind of service. A close comparison of the old as well as new set of Rules seems to suggest that the newer statute allows for the sending in of a lot more documents through the emails.
Rule 14 of the Trade Marks Rules, 2017 reads as follows: “(1) All applications, …. may be delivered by hand or sent through the post by a prepaid letter or may be delivered by hand or sent through the post by a prepaid letter or may be submitted electronically in the manner as laid down by the Registrar.
(5) The Registrar after informing the public in the Journal may accept applications…, or other documents online through the gateway provided for this purpose, or in case of documents not requiring the payment of a fee, through e-mail to a designated email address for the purpose.”
Address for Service
According to new Trade Marks Rules, an address for service should comprise postal address, a valid email address and mobile number of a trade mark agent.
New Trade Marks Rules categorically gives an opportunity to an applicant/opponent to provide an address for service, in cases where the agent withdraws from the proceedings or from doing any act for which he has been authorized or in case where the applicant/opponent himself withdraws the revocation of authorization.
In case of failure to provide the address for service within two months from the date of withdrawal or revocation, the application/opposition shall be deemed to have been abandoned.
Fees for extra characters in the specification
Contrary to the Trade Marks Rules, 2002, the new Rules do not restrict the specification of goods or services to 500 characters per class. No excess space fee has been prescribed in the new Trade Marks Rules.
Expedited Processing of Applications
No longer shall the owners of trademark have to wait long for their trademarks to get registered; thanks to the amendment of 2017 where under rule 34 the whole of the application procedure shall be expedited. An expedited application will be examined within three months from the date of an application. As compared to the old rules, the new rules expedite the whole of the application as compared to only examination reports.
Well Known Marks
As per Rule 124 of the Trade Marks Rules, 2017, any person may file a request for determination of a trade mark as well-known along with an requisite fee. Such request can be filed via e-module only.
Further, the said request shall be accompanied by a statement of case along with all the evidence and documents relied by the applicant in his claim. The Registrar may call further such documents as he thinks fit for the determination of well-known mark.
Moreover, before determining a trade mark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
Nonetheless, the Registrar may, at any time remove the trade mark from the list of well known marks after giving an opportunity of hearing to the concerned party if it is found that a trade mark has been erroneously or inadvertently included in the said list.
Requirement for representation of sound mark has been specified in Trade Marks Rules, 2017 which was not available under Trade Marks Rules, 2002.
Relevant part of rule 26 (2017) reads as follows:
“(5) Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.”
Assignment and Transmission of the Trademarks
As per the Trade Marks Rules, 2017, requirement of fee for recordal of title of a person according to the time period from the date of execution of instrument has been removed.
Hearing and Adjournments
Hearings may now be held through video conferencing or audio-visual communication. Adjournment of hearing may be requested three days before the date of hearing by applicant along with the payment of prescribed fee. Also, such adjournment cannot be sought more than twice and each adjournment shall not be for more than thirty days.
Associated trade marks:
According to new rules, no fee for association has been specified in the Trade Marks Rules, 2017 that helps us arrive at the conclusion that, now no association fee is required to be submitted at the Indian Trade Marks Registry.
Renewal of registration:
As per the Trade Marks Rules, 2017, now, a request for renewal can be filed not more than one year before the expiration of the last registration of the trade mark rather than six months as specified under old Trade Marks Rules, 2002.
Stringent measures shall now be taken in the opposition proceedings, aiming for quick disposal of oppositions. The applicants shall now have to keep track of time as regards to filing of the evidences, because the new rules shall not permit the applicants to file evidences once the date for filing it has passed, i.e. no adjournments shall be granted to applicants for filing the evidences. If applicants fail to file the evidences on time the application shall be deemed to be abandoned. Penalty of Rs. 10,000 shall be levied in case the applicants fail to contest the opposition and the same has been provided for the opponents.
The digital route does not end here; the registry has gone from top to bottom digital which is from the start of filing of a trademark registration application to Hearing of the matters. The new rules provide that hearings on matters by the Registry can now happen via audio- video means of communication also, which again is an aim to save time and make the process much speedier.
Though for many of us the new rules might be a little too much an expense though the services now offered by the Registry makes it worth that extra penny. These amended rules shall speed up the process for getting a trademark registered, it has the provisions for getting a declaration of a trademark being a well known mark and also has given a discount on filing electronically plus the registry has aimed for a speedy process of disposal of applications and oppositions and has also gone virtual with almost most of the proceedings getting online.
Contributed By : Ketan Bhatt(Advocate, TradeMarks Attorney)
Designed By : Vikash Singh