With effect from 6th march 2017 the new trademark rules came into existence. The intention is to simplfy the whole trademark registration process and makes it quick. E-filling and addition of email as an important part of address can be seen as an effort to further promote digitization.it would in turn is expected to expedite the overall process of trademark administration.
The noteworthy features of the new rule are:
- Sound mark are made registrable: the new trademark rule mentions where an application for for the registration of trademark consist of sound as trademark , the reproduction of same shall be submitted in the MP3 format not exceeding thirty seconds length records on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notation”.
- 3D Marks are made registrable: it includes shape and packaging of goods, application is filed in TM-A Form.
- E-fillings is promoted: a discount of 10% is given in filing this can be seen as a move to promote digitization and go paperless.
- Provision pertaining to Well–known trademark: the department of industrial policy and promotion shall now maintain a list of well-known trademarks. It means a brand can now include a list on form TM- M after payment of rupees1 lacs.
- Expedited processing of application: applicant can now make request for express registration. It is mandatory to file a request online for this request. DIPP extends the provision relating to expedited processing of an application for registration of trademark up to registration stage.
- Hearing via video conferencing: a hearing could be conducted via video conferencing or any other audio visual communication. This is very motivable measure to increase efficiency.
- of forms has been cut down to 8 from75: all kind of trademark application is through same form. Contested proceedings like oppositions, rectification, are through single form. It seems to be a very positive step to make the whole process less tedious.
- Fees increased drastically: in many cases it has been increased to 100%. For a trademark application in one class, it has been 4000-9000 rupees.
- E-Service of Document: communication sent by the trademark office through email will be understood as complete service. It will not be required to serve document through post. This will increase the speed of registration process and is an extremely affirmative process.
- Reduced adjournment: during an opposition hearing, a party is not entitled to ask more than two adjournments. This will substantially help for disposal of matters in time.
Separate fee structure for enterprise: There is a difference of around 50 % in the official fee structure of individual/startup/small enterprise and others. While for individual/startup/small enterprise fee is 5000 for physical filing and 4500 for e filing, it is 10000 for physical filing and 9000 (for e filing) for others. Here the meaning of Small Enterprise is:
- a) in case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006); and
- b) In case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for a medium enterprise under clause (b) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006.
Explanation: “enterprise” means an industrial undertakings or a business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods in any manner pertain to any industry specified in the first schedule to the Industries (Development and Regulation) Act, 1951 (65 of 1951) or engages in providing or rendering or any services or services in such an industry.
Small Manufacturing Enterprises: The investment in plant and machinery is more than twenty five lakh rupees but does not exceed rupees 5 crores (Rupees five crores only).
Medium Manufacturing Enterprises: The investment in plant and machinery is more than rupees 5 crores but not exceeding Rs.10 crores (Rupees ten crores only).
Small Service Enterprises: The investment in equipment is more than 10 (Ten lakh rupees) but does not exceeds rupees 2 crores
Medium Service Enterprises: The investment in equipment is more than rupees 2 crores but does not exceed rupees 5 crores.