New Trade Marks Rules, 2017

The Department of Industrial Promotion and Policy has introduced the Trade Marks Rules, 2017 which has been brought into effect from March 6, 2017. The new rules have replaced the erstwhile Trade Marks Rules, 2002.

The newly introduced rules have brought with itself a plethora of changes and amendments, so as to speed up as well as simplify the process of registering a trademark.

Whereas the previous trademarks rules had as much as 74 forms for every kind of application, the new rules have implemented a comprehensive procedure wherein the number of forms have been drastically reduced to 8, with sub-categories in each of the 8 forms.

Another major modification included in the new rules is the fees which have been completely revised. The fees for filing manually have seen overall increment. However, as part of the Digital India Programme, the fee for online filing is offered with a discount of 10 % as compared to manually filing applications. For instance, the fee for filing a new opposition against a trademark, manually, is Rs. 3, 000, while the fee for opposition online is Rs. 2, 700 (after discount of 10%).

Categories of Applicants – The basic requirement for applying for registration of a trade mark (beside the trademark itself!) is the applicant under whose name the trademark will be applied and thereafter duly registered. The new rules have introduced categories of applicants which are mainly two:

1. Individuals, start – ups and small enterprises, and

2. Others

Depending upon the type of the applicant, the fees for the application will be determined (a provision not present in the old rules). The fees for applicants who fall under the first category mentioned above, is 50 % of the fees for applicants falling under the second category. To elaborate, whereas the fees for filing a new trademark application for a start-up is Rs. 5, 000 (manual filing fees), the fees for filing a new trademark application for a large enterprise is Rs. 10, 000 (manual filing fees).

Shorter procedure of trademark opposition –

Under the old rules, the procedure of a trademark opposition, though elaborate, was time consuming and would take approximately 5-7 years to complete, which would consequently delay the registration or refusal of the trademark. Under the new trademarks rules, the opposition procedure has been considerably simplified. Provisions such as reduced period of taking adjournments during the opposition proceedings, reduction in the number of times evidence may be submitted by either parties to the opposition and limiting the number of extensions to be taken for submitting any evidence and / or further evidence to only two, have been introduced. Such simplification will ensure that the opposition proceedings are not delayed or postponed, would reduce expenses to be incurred by both the parties to the opposition, reduce time spent on the opposition by the parties, their respective attorneys and the Trade Marks Registry.

Change in determination of Well-known Trademark

New rules permit applicants to apply for their trademark to be recognized as a “well – known” one. In simple terms, a well – known trademark is one that is well recognized and any infringement could result in misleading the public, something like the half eaten apple symbol or three slant bars from a popular sportswear manufacturer. This is a positive step as it will allow bigger brands, especially ones with trans-border reputation, to file applications claiming that they have achieved the standing of a well – known mark.

Expedited procedure for application –

A relatively new concept incorporated in the new rules. The process of expedition would mean to fast track the process of registration of a trademark application. One can opt to expedite their application, upon payment of additional prescribed fees (which is four times the fees of filing new trademark application). This means that the application would be processed mush faster at every stage until registration, unlike the old rules where the expedition of the process took place only till the stage of examination of the trademark application.

Inclusion of sound mark –

The definition of a “trademark” as per the Indian Trade Marks Act, 1999, included a sound mark, provided it is represented graphically, which means that the sound mark which is applied for registration should be represented in musical notes and not the sound per se. However, the new rules have introduced the provision of applying a sound mark in MP3 format, such sound not being longer than thirty (30) seconds. With the growing recognition of brands being identified due to a trademark sound, this addition is pleasantly welcome. Not only will an applicant be able to apply for a sound mark through graphical representation, such sound mark can directly be applied in MP3 format, provided it does not last beyond thirty (30) seconds. This provision will enable the applicants to register their sound mark in its true form, as previously even the registration certificate of the sound mark would contain only the graphical representation of the sound mark, a process which lacked practicality. Inclusion of sound mark in MP3 format also indicates promotion of the Digital India Programme.

Video – conferencing –

In order to save time and expedite the process of registering a trademark, hearing through video conferencing and / or any other visual communication has also been introduced. A welcome change indeed, this facility is beneficial in situations where the applicant / applicant’s attorney may be unable to appear physically for the hearing yet attend the hearing through audio visual communication / video conference, thereby preventing any delay and / or adjournment to proceed a trademark application for registration.

Online communication for registration –

As per the new rules, any communication made through email will be considered as complete service of the communication. In such a case, the practice of providing documents through post thereafter will not be followed, thereby ensuring that a trademark registration is not delayed simply because the documents in connection thereto were not sent / not received / returned due to some reason. Accordingly, submission of valid e-mail address of the applicant along with postal address has been made compulsory.

Extinguishment of association fees –

Association fees are the fees an applicant has to pay, so as to get two trademarks associated to each other and such association being taken on record, if the two trademarks in question belong to the same applicant. While this was earlier a common practice, the new rules have completed erased this provision.

Submission of statement of use –

A practice followed in the United States, this provision has been newly introduced in India, to bring clarity with regard to use of a trademark. The new rules have made it compulsory to provide a statement of use along with the affidavit and supporting documents to claim that the trademark is in use while filing a new trademark application as opposed to the earlier practice where an affidavit and supporting documents were to be submitted after the trademark application was examined and if it were asked to be submitted by the Ld. Registrar or if it were opposed.

Period of filing renewal fees of registration –

Where the period of filing for renewal of a trademark registration was six months prior to the date of expiry of such registration, the new rules have amended the period of filing renewal request as early as one year from the date of expiry of registration. This provision gives more flexibility to an applicant to renew the registration of their trademark and also hopes to prevent any delay which may be caused in filing renewal request for a trademark’s registration within the stipulated time.

Inclusive definition of “opposition” –

Earlier the definition of “opposition” under the Trade Mark Rules, 2002 covered the following in its ambit –

“Opposition” includes an opposition to the registration of a trade mark or a collective mark or a certification trade mark, as the case may be;

With the new Trade Marks Rules, 2017, the ambit of opposition has been widened as follows –

“Opposition” means an opposition to the registration of a trademark or a collective trademark or a certification trademark, as the case may be and includes an opposition to grant of protection to an international registration designating India and opposition to alteration of registered trademark;

As per the definition provided by the new rules for the term “opposition”, aside from oppositions against trademarks, collective trademarks and certification trademarks, marks which may already have international protection and which have been applied for protection in India, under the same number designated to it in other countries, may also be opposed on suitable grounds. Further, if any third party has been aggrieved by alteration of a registered trademark, such party may oppose the registered trademark by directly filing the opposition at the appropriate Trade Marks Office, unlike earlier when such practice was pursued through litigation.

Uniform fees for filing request for assignment of a registered trademark –

Filing a request for assignment of a registered trademark would cost Rs. 9, 000 for each trademark, irrespective of whether the request for assignment is filed within 6 months / 12 months or after 12 months from the date of assignment of such trademark. Prior to this, as per the old rules, fees for filing request for assignment of a registered trademark was Rs. 5, 000 if request was filed within six months of acquisition of ownership of such registered trademark, Rs. 7, 000 for a request filed after six months but within 12 months of such acquisition and Rs. 10, 000 for a request filed after 12 months of such acquisition respectively. The new rules have streamlined this process by keeping a standard amount for filing request for assignment of a registered trademark, giving some relief to the applicants hoping to get the registered trademark duly assigned.