The Government of India notified Trade Mark Rules, 2017 with effect from 06 March 2017 with a view to simplify and speed up the entire process of trade mark administration. With a strong thrust towards digitalizing the entire administration incentives have been provided for digital filing and electronic communication. These Rules detail the working of Trade Mark office along with Trade Marks Act, 1999.

The Trade Marks Rules,2017-

The Trade Marks Rules, 2017 (New Rules), which repeals the Trade Marks Rules, 2002 (Repealed Rules), have come into effect from 6 March 2017. The key highlights of the New Rules are broadly set out below:

  • New Applicant Category-    Under the New Rules, a new category of applicant has been introduced viz: Start-up / Small Enterprises / Individual.
  • Increase in official fees- There is a steep 100% increase in fees for most applications / requests. The New Rules provide for a 25% increase in trade mark application fee in case of an individual / start-up / small enterprise applicant. For other applicants, the trade mark application fee has increased by 150%. With a view to encourage electronic.

Startups means an entity, incorporated or registered in India, not prior to five years, with annual turnover not exceeding INR 25,00,00,000 in any preceding financial year and working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property.

Small Enterprises are the enterprise engaged in the manufacture or production of goods, where the investment in plant and machinery does not exceed the limit of INR 10,00,00,000 and in case of an enterprise engaged in providing or rendering of services, where the investment in equipment is not more than the limit of INR 5,00,00,000.

Sound Marks-  Prior to the Trademark Rules 2017, the practicality of registering sound marks were quite difficult. While applicants would file applications to record sound marks by representing them graphically

[the notes] or by spelling out the tune, but now the amended Rules has introduced the facility for the registration of a Sound mark.  In the Trademark Application for a Sound mark, the Mark will be required to submit in the MP3 format not exceeding 30 seconds’ length along with a graphical representation of the sound notations.

Expedited Processing of Trademark Application- Earlier, only the examination of an application could be expedited. Several applicants who ended up the fee to expedite the process would have an examination report issued in weeks but would have to wait for the rest of the process to take place serially based on the applications.

Renewal- Application for Renewal of registration of a trademark may be filed within one year before the expiration of the registration of the trademark under FORM TM-R with the prescribed fee. Earlier, the Application for renewal could be filed only six months prior to the expiration of the trademark.

Applicant’s Affidavit will be required to claim the ‘use’-

 Earlier, it was Examiner’s discretion to call for Affidavit claiming the use of a particular mark. However, the new Rules have made it mandatory for the Applicant to file an Affidavit along with the supporting evidence to claim use of the mark. So, if an application is to be filed claiming usage in India, an affidavit with evidence of use has to be submitted along with the application.

Electronic service of document-

The New Rules provides for electronic service of documents including all applications, notices, and statements, papers having representations or any other document, which means the Registry may send an official communication through email and it will amount to service of such document on Applicant/Opponent / Agent provided the email has been sent to the id given.

New trademark rules to cut application forms to eight from 74

Salient features of New Rules-

Some of the salient features of the new Rules are:

  1. Sound marks are registrable: Form TM – A states that a trade mark application for sound can be filed with the sound in a MP3 format.  It is necessary to provide the musical notes in the application also.
  2. Request to enlist as Well Known mark: Under Rule 124, Any person can make a request to enlist a mark as a well-known mark along with statement of case, evidence and documents.  The fees for the same is Rs. 1,00,000/- (around USD 1400).
  3. Expedited processing of application: Under Rule 34, Applicants can make a request for express registration.  On payment of additional fees, the application will be taken out of turn for examination, hearing and registration.  Till now, the express provision was limited to issuance of examination report only, after which it was clubbed with other applications awaiting hearing, thereby making the express procedure nugatory.  It is mandatory to file a request online for this request.
  4. Hearing through Video conferencing: Under Rule 115, any hearing could be conducted through video conferencing or any other audio visual communication.  This is a very positive step in increasing efficiency.
  5. Number of forms have been cut down to 8 from the existing 74 forms:  One would how has this been achieved.  All kinds of trade mark applications (single class, multi-class, collective marks etc.) is through the same form.  Contested proceedings like opposition, rectification is through a single form.  This will make things easier.
  6. Fees have been increased drastically:In many cases it has been increased by 100%.  For a trade mark application in one class, it has been increased from Rs. 4,000/- to Rs. 9,000/-.  Applicants would not be averse to paying higher fee if the services are immaculate.
  7. Differential fee structure for a individual/start up/small enterprise and for others: There is a difference of around 50 % in the fee structure.  For a trade mark application in the first category, the fee is Rs. 5000 whereas in the second category is Rs. 10,000/-.
  8. Differential fee structure for physical filing and online filing: For online filings, there is 10% reduce fees at all stages.  This will discourage paper filing in sync with the push towards digital India reducing its carbon print.
  9. E Service of documents:  Under Rule 18, Communications sent by Trade Mark office through email will be construed as completed service.  It will not be required to serve documents through post.  This will increase the speed of registration process and is a very positive step.  There is no problem of documents lost in transit.
  10. Reduced Adjournments:  Under Rule 50, during an opposition hearing, a party is not entitled to ask for more than two adjournments.  This will reduce the time for decision in cases substantially.