1. The Ministry of Commerce & Industry (Department of Industrial Policy & Promotion) has notified the Trade Mark Rules,2017 (“TM Rules, 2017”) which have come into effect from 6th March, 2017. TM Rules, 2017 aims to achieve more robust, streamlined, efficient and user friendly processing framework in the working of the Trade Marks Office.
The TM Rules, 2017 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 will streamline and simplify the processing of Trade Marks applications and e-filing and e-mail as crucial part of working are in sync with the idea of Digital India.
Feature of Trade Mark Rules
2. The main features of Trade Marks Rules, 2017 are mentioned hereunder:
(i) Reduction in number of forms : Number of Trade Mark forms have been reduced from 74 to 8 and the opted formats can be used for multiple type of applications (Schedule 2 of the 2017 rules).
(ii) Backing e-filing : For promotion of e-filing of Trade Mark applications, fees has been reduced by 10% compared to the physical filing of application as per Schedule 1 of the 2017 rules. This digital move is likely to significantly cut down the delay in the prosecution of trade mark applications by enabling applicants to file their responses without having to wait for long.
(iii) Hike in Official fees for Trade Mark registration : Official fees for Trade Mark registration has been significantly raised i.e. 125% increase for filing trade mark application and 80% hike in case of renewals, subject to considerable concessions.
(iv) Concessions to start-ups, individuals and small enterprises : Based on stakeholders feedback, the fees for Individuals, Start- Ups1 and Small Enterprises have been reduced from that proposed in the draft rules i.e. only Rs.4,500 as against Rs.8,000 for e-filing of Trade Mark applications proposed at the draft stage (Schedule 1 of the 2017 rules).
(v) Hearing through video conferencing has been introduced : As per rule 115, hearing can be conducted via video conferencing or any other audio visual medium of communication.
(vi) Now Trade Mark office to confer “Well Known Trade Marks”: Under new rules, the provisions for determining and declaring a trade mark as “well-known” have been incorporated in the new Rules for determination of well-known trademarks have been laid out for the first time and use of electronic means to expedite the process of modalities for service documents by applicants and Registry is also allowed Rule 124 (2017). The official fee for making such a request has been fixed at INR 100,000 (approx. USD 1500). Before deciding a trade mark as “well-known”, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objections.
(vii) Reduction in adjournment numbers: Rule 50 limits the number of adjournments in opposition proceedings to 2 by each party. The amended rules seem to be start up as friendly and to have huge potential for boosting Intellectual Property Regime in India.
(viii) Association and extra-character fees has been done away with: Under the new Rules, the requirement of payment of association fee has been done away with. Furthermore, as opposed to the earlier practice wherein the applicant was required to pay INR 10 for every additional character, exceeding the prescribed limit of 500, in each class specification, there is no such stipulation in the new Rules.
(ix) Online access to Counter statement filed in response to Notice of Opposition obviates its official service requirement: The requirement of official service of the Notice of Opposition (NOP) by the Trade Marks Office now stands expressly dispensed with in those cases where a Counter statement has already been filed by the applicant in response to the NOP as available on the official online records. This precludes the redundancy of service of the NOP thus expediting opposition proceedings in such cases.
(x) Sound Marks: The new Rules have an express provision for filing applications for sound marks which shall be submitted in an MP3 format, not exceeding 30 seconds in length. This is also to be accompanied with a graphical representation of the sound notations. In this regard, the definition of “graphical representation” has also been revised to include representation in digitized form.
3. Since last one year, several initiatives have been taken to expedite the trade mark registration procedure and make it more convenient and user friendly with a view to enable ease of doing business. Further, these initiatives have also resulted in expedite disposal of pending matters. Now with the enforcement of the long awaited new Rules, it is expected that robust and positive changes would be brought about and encourage one and all to seek protection of their trade marks.