INDIA REDEFINES TRADEMARK REGISTRATION PROCESS - A QUICK GLANCE ON THE TRADE MARKS RULES 2017

This note is only intended as a general overview and is not to be viewed as a substitute for legal advice. Brands & Bonds shall not be liable for any actions taken or not taken on the basis of this note.

India has revamped the entire trademark rules and has made the trademark registration process more cogent and proficient all the while making the filing process more user-friendly. The Trademark Rules, 2017 is in effect from March 6, 2017. 
The new changes incorporate novel technological means in communication as well as disposals while making the trademark procurement a bit dearer.

 

A brief on the important changes are jotted below.

  • 1. Trademark Filing Fee hiked: The official fees increased from INR 4,000.00 (US$ 62.00) to INR 9,000.00 (US$ 140.00). The fees increase is more than double (125%).
  • 2. Reduced fees for Individuals/Start-ups/Small Enterprise: The new rules make differential treatment for Individuals, Startups and Small Enterprise with other forms of legal entities. INR 4,500 (US$ 70) for Individuals/Start-ups/Small Enterprise, instead of INR 9,000.00.
  • 3. Promotion of Digital/Paperless filings: If the trademark filings are physically done then it becomes again dearer as the cost would be INR 10,000 (US$ 154.00).
  • 4. New Set of Forms: The application forms and its corresponding numbers have been completely revised and the number of forms reduced from 75 to just 8 forms.
  • 5. Expedited Process: As per the erstwhile rules, the expedited trademark process was available only till examination stage whereas as per the new rules, the it is extended right up-to registration stage.
  • 6. Video Conferencing: Hearing can be held through video- conferencing or through any other audio-visual communication devices.
  • 7. User Claim – Mandatory: As per the new trademark rules, the trademark applications which are not filed as ‘proposed to be used’ or in other words which have a ‘user claim’ are required to be reinforced by way of a sworn affidavit substantiated with supporting documentary evidences of use.
  • 8. Electronic/digital means of communication and Service: The communications from and to the Trade Marks Registry can be by way of electronic means including email or other means of communication. Mobile number and email made essential and electronic/digital communications are considered sufficient and conclusive.
  • 9. No Particular form for Power of Attorney: Unlike the erstwhile Act, no particular form and format is prescribed in the rules authorizing the Agent/Attorney.
  • 10. Well- Known Trade Mark Status: A process for declaration of a trademark as Well-known trademark introduced. The Applicant, pursuant to the payment of fee of INR 1,00,000 (US$ 1538), may apply along with the statement of case with supporting documents for declaration of the trademark as Well- Known trademark.
  • 11. Fee for Notice of Opposition slightly increased: There is a slight increase in the filing fees for Notice of Opposition.
  • 12. Restrictions on the number of extensions in Opposition: The number of extensions/ adjournment in Opposition matters restricted to two.
  • 13. Trademark renewal fee Increased: The official fees increased from INR 5,000.00 (US$ 77.00) to INR 9,000.00 (US$ 140.00).
  • 14. Sound Marks: Format and specific provision and instructions provided for filing sound marks. MP3 format and 30 seconds length prescribed along with graphical representation of the sound notations.

 

In this scenario, it noteworthy that recently, the trademark matters were disposed off at considerable pace which in itself indicates the paradigm shift in the outlook and approach of the Indian Trade Marks Registry. 
The present initiatives and procedural changes mooted by the Trade Mark Registry are commendable and these changes are congruous with the international standards.