By Vasundhara Rastogi
Registering trademarks in India just got simpler: the government introduced its new Trade Mark Rules, 2017 on March 6. The new rules replace the Trademark Rules of 2002, and aim to establish a much more streamlines process, with emphasis on digital communication.
A faster, simpler, and transparent registration process will benefit businesses and will serve as an overall boost to India’s Intellectual property regime. Under the new rules, the Department of Industrial Policy and Promotions has introduced the following key changes:
Consolidation of forms
The new rules reduce the number of forms to be filed from 75 to 8 making it much easier for businesses, especially first time applicants. The new forms introduced are as follows:
- TM-A for application filing;
- TM-C for copyright search certificate;
- TM-G for trade marks agent registration/renewal;
- TM-M for multi-functions;
- TM-O to file opposition;
- TM-P for replacement of proprietor;
- TM-R for renewals; and,
- TM-U for registered user application.
Increase in government fees
However, the cost for filing almost all forms and applications has increased significantly. For example, the trade mark application fee has increased from US $61 (Rs 4,000) to US $152 (Rs 10,000) for physical filing, while the fee for the request for renewals has increased from US $76 (Rs 5,000) to US $152 (Rs 10,000) for physical filing.
Concession to startups and small businesses
The government has relaxed the application fee for startups and small businesses. Accordingly, the new trademark application fee for individuals, startups, and small enterprises is US $76 (Rs 5,000) for physical filing and US $68.50 (Rs 4,500) for e-filing.
Under new trademark rules, a firm will be recognized as a startup if it meets the criteria laid down in the government’s Start-up India Initiative. A startup is an entity that is not older than five years, has an annual turnover not exceeding US$ 152,776 (Rs 25 crore) in any preceding financial year, and is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property.
Foreign companies that fulfill the criteria mentioned above can also claim startup entity status. Furthermore, a startup needs to obtain certification from an inter-ministerial board.
In the service sector, a small enterprise is defined as an entity that has an annual turnover of not more than US $764,234 (Rs 5 crore) in any preceding financial years, while in the manufacturing sector the threshold is fixed at a turnover of not more than US $ 1,528,468 (Rs 10 crore) in any preceding financial years.
To encourage digitization, the government has offered a 10 percent concession on online filing of all applications.
Moreover, some requests can only be filed online. For instance, online filing is compulsory for the certification or transmission of an international application, an application for expedited processing for trademark registration or an application for determining a well-known trademark.
Registration for ‘Well Known’ trademarks
Brands that enjoy a good reputation in the market can now request that their trademark be included in the official ‘well-known’ marks list.
A person or company requesting this will need to file the TM-M form with the Registrar in the Trade Mark office, and provide a Statement of Case and supporting evidence. The application may also be subject to objections from the public for a thirty-day period by the Registrar.
The official fee to declare a mark as a ‘well-known’ mark has been fixed at US $1,528 (Rs 1 crore)
Provision to register Sound Mark
The new provisions make it easier to register sound marks, which are sounds used to perform the trademark function of uniquely identifying the commercial origin of products or services. Applicants can file the TM-A form and submit the sound in an MP3 format – with the length not exceeding 30 seconds – along with the graphical representation for musical notes.
Previously, registering sound marks required an applicant to spell out the tune as well as represent the sound notes graphically. The insertion of this rule is a welcome step as it gives some clarity on the mode of submission of a Sound Mark.
Simplified and expedited registration process
The new rules provide for expedited processing of applications, replacing the earlier provision for expedited examination of applications. With an additional fee of US $610 (Rs 40,000) [or US$305 (Rs 20,000) if the applicant is an individual, startup, or small enterprise], an applicant can speed up not only the examination process, but also fast track every subsequent stage until the grant of registration, as applicable.
Provision to fast track opposition proceedings
The government has also introduced the option of video conference hearings as part of any opposition proceedings in order to remove any delays in the process due to unavailability of any party or counsel. Moreover, a party cannot ask for more than two adjournments in an opposition proceeding.
Renewal of registration
In an additional move to make the trade mark process more efficient, applicants can seek renewal one year before the expiration of the registration. Earlier, they had to wait six months prior to expiration.
Compulsory filing of user affidavits
Previously, an affidavit was filed only when requested by the hearing officer at the time of a show-cause hearing. However, under the new trade mark rules, it is mandatory for any applicant claiming “Prior-Use” of the mark to file an affidavit of use along with relevant user documents.
To bring ease and efficiency in official correspondence, Trade Mark Office recognizes e-mail as a mode of service between the registry and the applicants. Consequently, every applicant will be required to provide an email address along with their postal address for service in India.
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