The Government of India on 6th March, 2017 had replaced the Trade Marks Rules, 2002 with the Trademark Rules, 2017 in order to streamline the process which is required for Trademark Registration in India. The new rules thus reduce the number of trademark forms and it also simplifies the trademark filing process, while increasing the government trademark filing fee substantially only for the corporate entities. The government has however notified that the new Trademark Rules 2017 aim to streamline and simplify the process of trademark application filing.
The Department of Industrial Policy and Promotion had notified the amended rules in order to improve the ease of doing business in the area of trademark applications by bringing down the number of forms to eight from 74. It has also scrapped some of the several redundant and some obsolete provisions.
This article however focuses on the features of this New Trademark Rules, 2017. Some of the noteworthy features of the new rules are:
- Sound marks are made registerable: The new trademark rules mentions that , “Where an application for the registration of a trademark thus consists of a sound as a trademark, the reproduction of the same shall thus be submitted in the MP3 format which is not exceeding thirty seconds’ length and are recorded on a medium which thus allows for an easy and clearly audible replaying which is accompanied with a graphical representation of its notations”. Such application is required to be filed on the Form TM – A with the sound in an MP3 format. It is thus necessary to provide the musical notes in the application.
- 3D Marks are made Registerable: It thus includes shape and the packaging of goods. This kind of application is thus also filed in Form TM-A.
The New Trademark Rules in this regard:
Where the application contains a statement which is to the effect that the trademark is a three-dimensional trademark, then the reproduction of the trademark shall thus consist of a two-dimensional Graphic or either photographic reproduction which is as follows:—
- i) the reproduction which is furnished shall consist of three different views of the trademark;
- ii) where the Registrar however, considers that the reproduction of the trademark is furnished by the applicant, does not sufficiently show the particulars of the three-dimensional trademark, then he may call upon the applicant in order to furnish within two months.
- E-filing is promoted: As a token of encouragement, adiscount of 10% has been provided for e-filing. This can thus be seen as a move in order to promote digitization and also go paperless.
- Provisions pertaining to Well-known mark: As it is mentioned in Rule 124, any person can thus make a request in order to enlist a mark as a well-known mark along with statement of case, evidence and documents. The fee for this process is Rs. 1, 00,000. The Department of Industrial Policy and promotion however shall now maintain a list of all the well-known marks. It thus means that a brand can now also apply for being included into this list on the form TM-M after the payment of fees of Rs 1 lakh. This change thus in particular may also help in order to improve the reputation of India’s IP system and also the country’s poor score for protection of famous marks.
- Separate Fees structure for an individual/ small enterprise/startup and for others: There is thus a difference of around 50% in the official fee structure of an individual/startup/small enterprise and others. While for the individual/startup/small enterprise fee is 5000 for the process of physical filing and also of Rs.4500 for e-filing, it is thus, Rs.10000 for physical filing and Rs.9000 (for e-filing) for others.
- Expedited processing of the application: Under Rule 34, the Applicants can make a request for an express trademark registration. On the payment of an additional fees, the application will then be taken out of turn for the purpose of examination, hearing and registration. It is thus mandatory in order to file a request online for this request. DIPP thus extended the provisions which are relating to expedited processing of an application for the registration of a trademark up to the registration stage.
- Hearing via Video conferencing: Under Rule 115, any hearing could now be conducted through means of video conferencing or also any other audio visual communication. This is thus a very motivating measure in order to increase efficiency.
- Number of forms to be filled have been reduced to 8 from the existing 75 or so forms: All kinds of trade mark applications be it either single class, multi-class, collective marks etc. is now through the same form. Contested proceedings such as opposition, rectification is now through a single form. It thus seems to be a very positive step in order to make the whole process less tedious.
- Fees increased drastically: This is thus the most noteworthy step. In many cases it has been increased by 100%. Thus for a trade mark application in one class, it now has been increased from Rs.4,000/- to Rs.9,000/-
- E Service of documents: Under Rule 18, Communications which are sent by the Trade Mark office through email will thus be understood as completed service. It will not be required to serve the documents through post. This will also increase the speed of the registration process and it is an extremely affirmative measure.
- Reduced Adjournments: Under Rule 50, during an opposition hearing, a party is thus not entitled in order to ask for more than two adjournments. This will thus substantially help for the disposal of the matters in time.
This article has been contributed by Simmi Setia, Content Head, LegalRaasta- an online platform for Trademark search, trademark registration, patent filing, patent search etc.