Proposed Amendments to Trademark Law in India – Fee Hike and More.
Nov 2016 Update: We are hearing reports that the amendment will come into force this month. While nothing has been confirmed as yet, it appears that the amendments will be published in the Gazette shortly.
The Controller of Patents, Designs and Trademarks recently through a public notice dated November 19, 2015 brought to the notice of the public the draft of the Trademarks Amendment Rules, 2015 proposing to amend the Trademark Rules, 2002 and has invited comments from the public and stakeholders within 30 days from the date this notification is published in the official gazette of India.
Objections and suggestions may be sent to the Additional Secretary to the Government of India at sahni.palka at nic.in
When does this come into effect: Once the Government receives comments from the stake holders, and modifications if any are made, it will published in the Gazette with an effective date. However, in the past, on occasions the amendments to the Trademark Rules have been given retrospective effect and the additional fees collected from the applicants/proprietors.
While there are several changes on a procedural front, I have covered some of important changes in this post.
One of the biggest changes in the rules with also the highest impact is the fact that almost all the fees have been increased by a 100%. From filing to renewing, the entire trademark registration procedure will cost an applicant twice as much as it does now. Some of the important changes in the charges are mentioned below:
Additional fee for paper filing:
In further efforts to go paperless, there would be a 10% additional fee on the official fees if the trademark applications and forms are submitted by paper. Considering the hike in the regular official fees, this additional fee could encourage more applicants to file their applications electronically.
Statement of Use:
At present, filing an affidavit with evidence supporting the claim of use was done only when requested by the examiner. However, the amendment makes it mandatory for all new applications filed claiming use of the trademark in India to file an affidavit along with supporting documents evidencing the period of use claimed in the application at the time of filing the application. As you may know the Indian trademark office has a wide interpretation to the term use of the trademark in India.
Expedited examination of the application:
The present practice of filing an expedited request for examination ends with the examiner examining the application and the counsel filing a response thereto. The remaining steps in processing the application are carried on at the regular pace. However, the amendment now brings in the consideration of a response to the examination report, scheduling show cause hearing if required, the publication of the application and disposal of the opposition thereto if any till the final disposal of the application within the ambit of expedited examination and this is a welcome step. The modalities for the same are to be determined by the Registrar.
Registrar to maintain a list of Well Known Trademarks:
One of the most interesting amendments is one empowering the Registrar to review an application to recognize a trademark as a well-known trademark. It also seems that the amendment gives a considerable amount of discretionary power to the Registrar to define the criteria for arriving at such a decision. If the Registrar is satisfied based on the evidence adduced by the applicant along with a statement of case, he may include the trademark in the list of well-known trademarks. The amendment also provides a safeguard that empowers the registrar to remove the trademark if it was later found that the same was erroneously included in the list. The cherry on the cake is the official fee for inclusion of the mark in the well-known list is a hundred thousand Indian rupees (Rs.100000 or USD 1667). Any takers?
Application for registration of Sound marks:
The amendment paves the way for filing of an application for registration of Sound marks. The application is to be accompanied by the sound file in an MP3 format nor exceeding 30 seconds and with a graphical representation of its notations. There have been earlier instances when the trademark office has merely accepted the graphical notations as a sound mark as there was no facility to submit the sound file.
Simplification of application forms:
The number of forms for filing various applications have been simplified and consolidated into few forms.
Current edition of the NICE classification will be followed. Additionally, the Registrar shall also publish a class wise and alphabetical index of list of goods and services including goods and services of Indian origin.
While we wait for the final Rules and the date that it comes into effect (retrospective or not), if you’ve been sitting on the fence about filing an application or renewing one, now just might be the time to move things along. A stitch in time may save nine at half the cost!