Trade Marks Rules, 2017 – What it means for Startups & SME’s
The Controller of Patents, Designs and Trademarks 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 had invited comments from the public and stakeholders within 30 days from the date the notification published in the official gazette of India. At last, the Trademarks Rules, 2017 came into effect on March 06, 2017 with several changes ranging from increase in official fees, discount for online filing of trademark applications, hearing through video conferencing, maintaining a list for well-known trademarks among other things.
While this post will cover only the amendments with respect to startups and small enterprises (SME’s) you may also check out posts from my colleagues in respect of the journey of the trademark office from paper filing to digital, practical aspects of the online trademark filing system, increase in the official fees to an extent of 125% and changes in the rules in general and the reduction of the number of the trademark forms.
The new rules offer 50% discount on the official fees for startups and SME’s (small and medium enterprises) with respect to filing an application for registration of a trademark and for expedited processing of an application for registration of a trademark. Filing an application for registration of a trademark is Rs. 5000 (Paper Filing) / Rs. 4500 (e-filing and expedited processing of an application for registration of a trademark is Rs. 20000 (e-filing only)
The applicant should be recognized as a startup by the competent authority under the Startup India initiative. To qualify as a small enterprise, the applicant’s investment in plants and machinery alone should not exceed ten crore rupees if the applicant is a manufacturer. However, if the applicant is a service provider, the investment in equipment in general should not exceed five crore rupees.
Unlike the Indian Patent Amendment Rules, 2016 where the applicant being a startup/individual/SME enjoys discounted costs for the entire life of a patent application and even subsequently thereafter, in respect of renewal of the patent, the Trademark Rules, 2017 has limited the discounts with regard to Startups/Individuals/SME’s only filing and expedited examination of the trademark application.
The other amendment that startups might find useful is the ability to request amendment of the specification of goods and services in the event of them being wrongly classified at the time of filing the application. On several occasions, entrepreneurs and applicants file applications on their own or using a low-cost filing service provider which may not have an experienced lawyer to classify the specifications of goods and services. When the trademark office raises objections on erroneous classification, the only option earlier was to file a fresh application or delete the specifications objected by the examiner. However, the amendment now provides for splitting the classification and adding new classes to the present application. This will save the applicant from losing time and priority by filing a new trademark application.