A trademark’s degree of registrability or its ability to sustain a suit or enforce a…
The Trade Mark Rules, 2017 notified and came into effect on 6th March 2017 repealing the Trade Mark Rules, 2002. These rules have been framed with the intention of simplifying and expediting the procedure for registration of Trade Marks in India.
Key Highlights of the New Rules:
- Categorization of Applicant and Fees
- Increase in Fees
- Reduction in Forms from 75 to 8
- E-Communication for Faster Processing
- Request for Well Known Trade Marks
- Provision for Sound Mark
- Prior User Affidavit in case of prior use claim
- Dispensing of Service of Notice of Opposition if Counter Statement is filed prior to service:
- Expedited Registration Process
- Provision for Hearing through Video Conferencing or audio-visual communication devices
- Limited Adjournments
- Renewal of Registration
- CATEGORIZATION OF APPLICANT:
Under the new rules, the Applicants are categorized as An individual, Start Up, Small Enterprise and other than this, wherein “Startup” means an entity in India recognised as a startup by the competent authority under Startup India initiative, and in case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation / registration as per Startup India Initiative and submitting declaration to that effect.
While “Small Enterprise” has been defined as in case of an enterprise engaged, in the manufacture or production of goods or providing services, an enterprise where the investment in plant and machinery or equipment in case of services does not exceed the limit specified for a medium enterprise under sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006);
- INCREASE IN OFFICIAL FEES:
In case the applicant is individual/ Start Up/ Small Enterprise, the official fees for filing of trade mark is now 5000/- per mark per class, however in case of E-filing the fees to be paid would be INR 4500/- per mark per class. In all other cases, the official filing fees is INR 10000/- per mark per class for physical filing and INR 9000/- per mark per class for E-filing.
For almost all applications/requests, the fees have been increased by 100%. However, on each fees 10% concession is applicable in case of E-Filing in order to encourage E-filings.
- REDUCTION IN NUMBER OF FORMS:
The number of Forms has been steeply reduced from 75 to 8 and this reduction will definitely make the process lucid and short. The numbers have been replaced with the alphabet. These are the list of forms introduced by the Trademark Rules, 2017 (hereinafter referred to as Rules):
- TM-A: Application for Registration for goods and services (one or more than one class) [marks, collective marks, certificate marks, series].
- TM-M: Amendment of Trademark application; seeking grounds of decision; application of deposition of regulation of collective trademark; alteration of regulation of certification trademark; request for certified copy; duplicate registration certificate; extension of time; request to review of decision to Registrar; inspection of document; request to Registrar for particulars of advertisement; review of Registrar’s decision; petition (not otherwise charged) for obtaining Registrar’s order for any interlocutory matter in a contesting proceeding; request to inclusion of a mark in list of well-known trademarks; any other matter not covered in other TM forms.
- TM-R: Application of renewal of a trademark; request for renewal with surcharge; request for restoration of a trademark.
- TM-C: Application for search certificate request.
- TM-O: On a notice of opposition; application for rectification of register; application under rule 99, 135, 140; application under Section 25 of Geographical Indication of Goods Act, 1999 to invalidate a trademark or counter statement thereto.
- TM-P: Request to replace subsequent proprietor as registered proprietor on register, request to amend the details of registered proprietor or registered user(s); request to amendment of registered trademarks; request for amendment in specification of goods or services; request for conversion of goods; request for dissolution of association between trademarks.
- TM-U: Application for recordal of registered user(s); request for amendment in details of registered user(s); application for cancellation or variation or registered user(s); application for intervene in the proceedings by third party.
- TM-G: Application of registration of a trademark agent; request for continuation as a trademark agent; restoration of the trademark agent name in register; alteration related to details of trademarks agents in the register.
- E-COMMUNICATION FOR FASTER PROCESSING:
New Rules provides that all applications, notices, statements, papers having representations affixed thereto, or other documents authorised or required by the Act or the rules made there under, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar or any other person may be delivered by hand or sent through the post by a prepaid letter or may be submitted electronically in the manner as laid down by the Registrar.
- REQUEST FOR WELL-KNOWN TRADE MARKS:
Rule 124 of the Rules provides that any person may request the Registrar for determination of a mark as well-known by submitting such request under form TM-M. A statement of case along with all the evidence and documents relied by the applicant in support of such claim shall accompany such application. The Registrar may invite objections from the general public while considering such applications. These objections must be filed within 30 days of the invitation. In case the trademark is determined as well-known, the same shall be published in the trademark Journal and included in the list of well-known trademarks. The fee for the request to include a trademark in the list of well-known trademarks is INR 1, 00,000.
- PROVISION FOR SOUND MARKS:
Rule 26(5) of the Rules provides that when the application has been made for a Sound Trademark, it shall be reproduced in MP3 Format not exceeding a length of 30 seconds, recorded on a medium that allows for easy and clearly audible replaying quality along with a graphical representation of its notation. TM-A provides that in case of sound marks representation of specific musical notes must be submitted at the place provided for the trademark.
- PRIOR-USER AFFIDAVIT:
When the use of the trademark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.
- DISPENSING OF SERVICE OF NOTICE OF OPPOSITION IF COUNTER STATEMENT IS FILED PRIOR TO SERVICE:
Rule 42 of the Rules provides for the notice of opposition. Ordinarily, the Registrar shall serve a copy of the notice of opposition to the applicant(s) within 3 months from its receipt at the office. But, if the applicant has already filed the counter statement on the basis of copy of notice of opposition available on the official website, the requirement of the service of such copy to the applicant(s) shall be dispensed with (not needed).
- EXPEDITED PROCESS OF APPLICATION:
On an application for expedited examination, the proceedings such as examination, the consideration of response to the examination report, scheduling of show cause hearing, if required, the publication of the application and the opposition thereto, if any, till final disposal of the application shall also be dealt with expeditiously subject to such guidelines as may be published in this regard by the Registrar in the trademarks Journal.
- PROVISION FOR HEARING THROUGH VIDEO CONFERENCING OR AUDIO-VISUAL COMMUNICATION DEVICES
Hearing may also be held through video-conferencing or through any other audio-visual communication devices and in such cases the hearing shall be deemed to have taken place at the appropriate office.
- RENEWAL OF REGISTRATION:
An application for the renewal of the registration of a trademark shall be made in Form TM-R along with the prescribed fee. Such renewal of a mark can be done 1 (one) year prior to the expiration of its registration whereas in the Repealed Rules it was 6 (six) months prior to the expiration of registration.
The new Rules have expressly promoted digital filing which will make the process efficient and shorter. The electronic services provided will expedite the processing of applications as all the documents shall be furnished and received (exchanged) via e-mails. This will enable faster registration.