Trade Marks Rules, 2017- Dissected, Scrutinized and Simplified
Seems like the month of March is jinxed with respect to Trademarks in India! March 2016, we witnessed the infamous “Mass abandonment” of over one lakh trademark applications and a year later in March 2017, the Indian Trade Marks Office again strikes back with the enforcement of the much anticipated “Trade Marks Rules, 2017”.
In pursuance of the Trade Marks (Amendment Rules) 2015 issued on November 19, 2015, the Office of the Controller General of Patents, Designs and Trade Marks published the amended Trade Marks Rules, 2017, with immediate effect from March 06, 2017.
The new Rules are a completely revamped version of the old Trade Marks Rules, 2002 and have brought about prominent amendments to the rules and procedure governing trademark prosecutions in India. The amended Rules, prima facie seem “Startup” friendly and very much in consonance with the idea of Digital India.
It would definitely be an understatement to say that the new Rules managed to mystify everyone with the extraordinary fee hike, for instance a hike of 125% for trademark filings. But hold on, the new Rules have much more in store apart from just the fee hikes.
The basic crux and all major highlights of the 49-page Trade Marks Rules, 2017 are summarized under:
Applicant categories: The new Rules have broadly classified the types of Applicant into two:
The major difference between these two categories would only be with respect to the trademark filing fees- INR 4500 per mark per class for an Applicant who is either an Individual or a Startup or a Small Enterprise. Whereas, INR 9000 (double the fee) per mark per class for an Applicant falling under any other category.
Address for Service in India:
In a bid to digitalize the trademark prosecution and communication process, every applicant ought to furnish a valid e-mail address along with the postal address in India. Trademark agents will be required to provide a valid mobile number registered in India.
Preliminary advice by Registrar:
Section 133 of the Trade Marks Act, 1999 lays down a provision whereby any person who intends on filing a trademark, can file an application to get preliminary advice from the Registrar with respect to the distinctiveness of his trademark.
The new Rules prescribe that such a request for preliminary advice from the Registrar can be filed under Form TM-M on payment of INR 1800.
Trade Mark Forms:
The amended Rules have struck down all the old Trade Mark Forms (approx. 75 of them) and replaced them with only 8 forms. The First Schedule of the Rules prescribes the nature of the services, its corresponding Forms and the official fees for the same.
In order to encourage digitalization and e-filing, paper applications would cost 10% more than the fee prescribed for online applications. For instance, the fee for filing a new trademark application by a company would be INR 9000 if filed through online filing system; whereas the fee would be INR 10,000 if filed through paper application.
Unlike before, there are no longer separate Forms TM-1, TM-2, TM-51… for filing new trademark applications. Going forward, all new trademark applications, be it a single or multi-class, or convention application, or collective mark etc., shall be filed under Form TM-A.
In addition to filing 3D marks, marks claiming distinctiveness over the color combinations, etc., the new Rules now enable filing of a sound trademark as well. The recorded reproduction of the sound trademark ought to be submitted in MP3 format, not exceeding thirty seconds, along with a graphical representation of its notations.
Statement of Use:
Prima facie reading of the Rules indicates that hereinafter for filing any application claiming usage from a date prior to the date of filing of the application, an affidavit testifying to such usage along with supporting documents ought to be submitted.
Earlier, such User Affidavits were only submitted if specifically required by the Examiner/Registrar.
Another major change brought about in the new Rules is the provision for expedited processing, that is on payment of INR 40,000 [INR 20,000 if the Applicant is an Individual/Startup/Small Enterprise], the entire trademark prosecution procedure shall be expedited.
This provision is more like an end-to-end service, wherein the entire procedure including examination, reviewing of reply to examination report, appointment of hearings, advertisement, and opposition, until final disposal of the application would be fast-tracked.
The notice of opposition and counter-statement shall be filed under Form TM-O. No drastic hike in opposition fees [standard fee of INR 2700 per class for notice of opposition and counter statement].
A notable change with respect to renewal provisions is the timeline for filing the renewal application. Before the amended Rules came into force, a renewal application could be filed 6 months prior to the validity date of the trademark.
However, the new Rules prescribe that a renewal application can be filed one year prior to the validity date of a trademark.
Assignment and Transmission:
Filing an application for assignment of a registered trademark would now cost INR 9000 per trademark, irrespective of whether the assignment request is filed within 6 months/12 months/ after 12 months from the date of assignment.
The amended Rules seems to uphold and incorporate the idea of Digital India in every possible way. Hearings can now be attended through video-conferencing or any other audio-visual means of communication.
Request for adjournment can be made under Form TM-M, at least 3 days before the hearing date. However, the new Rules have restricted the maximum number of adjournments that can be requested by a party to 2 and the duration of each of such adjournment to not more than 30 days.
Coming to the most interesting and the most exorbitantly priced amendment- inclusion of a trademark in the list of well-known trademarks. Presently, there are 81 trademarks designated with the status of a “Well-Known” trademark by a competent authority such as the IPAB, Hon’ble High Courts and other lower Courts, the Trade Marks Registry, etc.
The amended Rules have now included a brand-new provision whereby any person can file an application under Form TM-M by paying a lofty amount of INR 1,00,000, to designate his/her trademark as a Well-Known trademark. The Applicant however would be required to provide supporting documents corroborating his claim that the mark should be recognized as a well-known trademark.
Streamlining trademark procedure- A pricey affair
The core objective of the Trade Marks Rules, 2017, which replace erstwhile Trade Mark Rules, 2002, is to streamline the trademark procedures in India and promote e-filing.
However, if we were to weigh the aspect of fee hike at one side, and the benefits of streamlined, simplified and quicker trademark prosecutions at the other, the Trade Marks Rules, 2017 doesn’t seem quite well-balanced. At the end of the day, one could say that the benefits have come in at a substantially higher cost, considering the drastic and immediate fee hike.
Having said that, we ought not forget the outstanding efforts of the Trade Marks Office for having brought in better infrastructure and technology through comprehensive e-filing system, stringent compliance of deadline dates, automation and E-Registration Certificates.