By: Nidhi Tandon
The Trade Mark Rules, 2017 (“Rules”) notified by the Department of Industrial Policy and Promotion (“DIPP”) last month completely revamps the Trade Mark Rules, 2002 (“Old Rules”) to simplify and expedite the trademarks registration process in India and promote e-filings. The Rules have come into effect from 6th March, 2017 and some of the notable changes are as follows:
Consolidation of Trademark application forms from 74 to 8
The Old Rules had one form for each type of application totaling to a whopping 74 forms whereas the Rules have consolidated multiple forms such that they could be used for multiple types of applications and requests. The new forms have been simplified based on the type of the trademark matter such as Form TM-A for applications, Form TM-O for Oppositions, Form TM-R for Renewal or Restoration application and so on. This is expected to make the entire prosecution process less tedious.
Categorization of applicants
Applicants (both Indian and foreign entities) have been categorized into different categories, i.e. individuals/ startups/ small enterprises and others.
“Small Enterprise” refers to an enterprise engaged in the manufacture or production of goods, whose investment in plant and machinery does not exceed the limit of INR 100,000,000 /- (Rupees One Hundred Million)(around USD 1,551,374) and in the case of an enterprise engaged in providing services whose investment in equipment does not exceed the limit of INR 50,000,000/- (Rupees Fifty Million) (around USD 775,687) as specified under Section 7(1) of the Micro, Small and Medium Enterprises Development Act, 2006. These limits are also applicable to foreign enterprises.
“Start-up” means an entity, incorporated or registered in India, within the last five years with an annual turnover not exceeding INR 250 million (around USD 3,878,400) in any preceding financial year and working towards innovation, development, deployment, and commercialization of new products, processes, or services driven by technology or intellectual property. A Start-up also has to be registered with the DIPP.
In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation /registration as mentioned above and submitting a declaration to that effect at the Trade Marks Registry will pass muster.
Increase in filing fees and shift to e-filings
The filing fees for application of a trademark per class has been increased to INR 5,000/- (around USD 80) for individuals, start-ups and small enterprises and INR 10,000/- (around USD 160) for others from the erstwhile fee of INR 4,000/- (around USD 65). There is a 10% discount for e-filing all kinds of applications to encourage online filings. This is a welcome step to promote paperless and electronic records and will go a long way in improving the efficiency and productivity of the Trademarks Registry. Expedited processing has also been introduced for the first time right upto the registration stage, subject to payment of the prescribed fees.
Discounts to small business, startups and individuals.
The Rules offer 50% discount on the official fees to the individuals, start-ups and small enterprises for new applications as well as for filing applications for expedited processing. The government’s motto of promoting small business as well as entrepreneurs will receive a boost with this concessional fee and will encourage them to register their trademarks proactively.
Determination of well – known Trademarks
Earlier, only the Courts had the power to decide if a mark is well-known or not when adjudicating trademark infringement disputes. Now, under the Rules, any interested person may request the Registrar in the prescribed form (and payment of the fee of INR 100,000/-, i.e. around USD 1550) for the determination of a well -known trademark along with statement of case, evidence and documents. While the Registrar has been vested with absolute powers in this regard, he/she has to invite objections from the general public prior to making a decision in this regard. In a significant departure from the Old Rules, the DIPP shall now maintain a list of well-known marks.
Registration of Sound Marks
While the Trade Marks Act, 1999 provides for registration of ‘Sound Marks’, the Old Rules were silent about sound marks. The New Rules address this by expressly providing that an application for a sound mark can be submitted in an MP3 format (upto 30 seconds in length) along with a graphical representation or a digitized form of the sound notation.
Compulsory Filing of Statement of Use or Affidavit
Earlier, the Applicant claiming prior use while filing the application only needed to specify the date since the mark was being used. It was the Registrar’s discretion to call for an Affidavit claiming the use of a particular mark at the hearing stage. Under the Rules, if the applicant is claiming use of the mark before the date of the application, it is mandatory to file an affidavit with the supporting evidence to claim use of the mark along with the application. While this may inconvenience applicants whose date of application would be the same as that of the date of use of the mark, it is expected to weed out frivolous applications and claimants.
Electronic Communication and hearings via video conferencing
Considering the logistic inefficiency regarding service of examination reports through post that led to the TMR abandoning several marks in the recent past, e-mail has been made an essential part of address for service, to and from the Trade Marks Registry in a rather belated move. Any hearing may be held through video conferencing or any audio visual communication device. This will lessen the adjournments taken in many cases.
Adjournments reduced in Opposition and Rectification Proceedings
Only two adjournments in opposition and rectification proceedings by each party with each adjournment not exceeding 30 days are possible under the Rules. This will go a long way in disposing off matters in time.
Renewal period extended
The renewal of registration of a trademark may be filed within one year prior to the expiration of the registration of the trademark as against the earlier period of six months.
Overall, the Rules signify a drastic change effected to bring the trademark prosecution process on par with the trademark practices in other countries. It is a welcome move towards streamlining the trademark registration process and making it relatively easier, faster and efficient.