The Trade Marks Rules, 2017 (New Rules), which repeals the Trade Marks Rules, 2002 (Repealed Rules), have come into effect from 6 March 2017.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 filings, there is 10% concession on official fees for e-filings.
Forms simplified
> The Repealed Rules had more than 70 forms / applications for various purposes whereas the New Rules have consolidated the same and the number of forms / applications has been reduced to 8 (eight). The new forms have been simplified further and are now named using alphabets. For example: (i) Form TM-A for applications: (ii) Form TM-O for oppositions; etc.
Electronic communication
>The New Rules set out the modalities for service of documents through electronic communications, from the Trade Mark Registry (TMR) to the applicants. While providing the address for service in India, the applicant is necessarily required to provide an email address as well. Any written communication from the TMR to the postal address or email address as provided shall be deemed to be properly addressed.
User claim made stringent
>When a trade mark application is to be filed for the purposes of claiming ‘prior user’, the same has to be supported by an affidavit along with relevant user documents.
Expedited registration process
>On an application for expedited examination, the examination stage as well as subsequent stages including oppositions will be expedited. The Repealed Rules provided for an expedited examination process which at times led to stalling of an application, subsequent to the examination stage.
No extension of time
>The Repealed Rules allowed for additional time for filing evidences in case of oppositions and rectifications / cancellation proceedings. The New Rules do not provide for any additional time as the legislative intent is to mainly curtail prolonged opposition/rectification proceedings.
Expeditious Hearing
>The applicant / opponent shall be given only 2 (two) adjournments in respect of a hearing and each adjournment shall not be for more than 30 days.
>Hearings at the TMR may also be held through video-conferencing or audio-visual communication devices.
Renewal
>Under the New Rules, fees for the renewal of a mark can be paid 1 (one) year prior to the expiration of its registration whereas in the Repealed Rules it was 6 (six) months prior to the expiration of registration.
Applications for Well-Known Marks
> This application will now be possible at a steep fee of INR 100,000.
>Under the New Rules, any person can file an application with the TMR to include a mark in the list of well-known marks maintained by the TMR. Such a request has to be supported by necessary documents. However, before determining a trade mark as “well-known”, the Registrar may invite objections from the general public.
>Notably, the Registrar of trade marks now has the power to remove a trade mark from the list of well-known marks if it is found that the same has been (i) erroneously or inadvertently included; or (ii) no longer justified to be, in the list of well-known trade marks.
Khaitan Comment: The New Rules are certainly a step towards expeditious trade mark registration process in India. The other notable takeaways of the New Rules are: (i) increase in fees; (ii) simplified forms; and (iii) provisions for determining a mark as a well-known trade mark.
— Smriti Yadav (Counsel), Rajeevkumar Nambiar (Senior Associate) and Raj Rao (Senior Associate)
Note by Khaitan & Co., Advocates since 1911. For more information, please contact editors@khaitanco.com
