The Trademark Rules 2017 – The online filing system version 3.0
The Trademark Rules 2017 were finally notified on March 6, 2017 after months of speculation and several mistimed email blasts notifying people of its imminent adoption. The crux of the draft rules hasn’t changed, since its publication in November 2015 with fewer forms, a more digital approach, hiked fees, expedited processes and the inclusion of well-known trademarks on the register. While my colleagues have covered the changes in the rules, the changes in the fees and even tracing the history of the rules, my post is solely focused on the “Online Filing of Trade Mark Version 3.0” as the registry now calls its filing system.
The Online Filing System Version 3.0
I intend on covering some of the major changes and some seemingly frivolous ones like the new login page [I got locked out after trying to sign in with the wrong password thrice – Earlier you could keep playing guess the password till kingdom come! The only way to unlock it now is by using the digital signature]
Once in, the tabs on the left have the forms to be filed. From having some of the online versions of the 75 forms [remembering all of them required some use of grey matter] to now having just 8 forms is a great change. The forms are now all alphabetic with their broad classification – TM-A [all applications], TM-M [miscellaneous], TM-R [renewal, restoration], TM-C [certificate and search], TM-O [oppositions], TM-P [post registration changes], TM-U [registered users], TM-G [registration of trademark agents].
While there are a bunch of new forms and updated versions of the older ones, I have focused on new applications and listed out just a few changes that I noticed.
Whether you want to file a single class, multi-class, application with or without priority for a standard mark, collective mark, certification mark or series mark you just need to choose form TM-A and select the type of application.
Before you choose the type of application, you need to choose the type of entity that will own the trademark as the fee will depend on it. When I tried the system though, there were still some issues with this as it keeps taking the fee of the previous applicant entity – I prepared an application for an individual but the fee was 9000 since I filed an application for a company before that. I hope this will be sorted out soon. [As of now the way to deal with it, is signing out of the system and signing back in to choose the appropriate applicant category.]
Adding applicants while filing is now much easier where they can be added on the same page, instead of searching for and creating separate proprietor codes as with the previous version.
While adding an applicant, it is now mandatory to fill out an email id – this ties in with the amendment to the Rules, where it now factors in service by email. So, examination reports and notices will be sent to this email id.
The trademark options now allow the user to file a sound mark by uploading an MP3 file [which is quite neat as opposed to applicants filing the graphical representation of the notes of their melodies/sounds in the hope that potential infringers and courts could all read music]. Some practical considerations to keep in mind though is that the mp3 file size has to be less than 5 MB.
Another change to the system is that it is now mandatory to submit a power of attorney at the time of filing the application on behalf of an applicant. Earlier we had the option of submitting the power of attorney at a later date but it now it’s something that has to be done at the time of filing. [Given the recent increase in pace and examination done within a couple of weeks, it makes sense to have all the documents ready at the time of filing to avoid any compliance objections]
Another change is the addition of the field for the trademark description – Which could help with trademarks where there is no text and has only a visual representation. As of now though this is not a mandatory field to fill in so you need to keep an eye out for it.
A final new feature is the addition of an undertaking attesting that all the information provided is true.
While this form allows the user to choose various options from amending applications to filing interlocutory petitions, the interesting and new form on the block is the one for the inclusion of a mark as a well-known trademark mark.
While the rules specify the information required, from a filing purpose it is clear that an existing application number has to be specified – either registered or pending. So, if you’d like for a mark to be considered well known, you can’t file a new application as a well-known mark but rather an existing one has to be included.
With just the applicant and the existing trademark details, a statement of case has to be uploaded along with reasons for why the mark should be treated as well known.
The filing system has come a long way from the initial version and while there are a few glitches here and there with a few atrocious spellings [cancell, conset inclution, subsequnet, etc] overall the system seems simple and easy to use. When we started filing in 2011, it used to take half a day to upload files and get a simple application filed, but I could try every combination and discard applications in a matter of hours today.
With the new and improved system, email notifications, video conferencing for hearings and the works, the Government has truly stuck to its Digital India campaign.