Trademark Rules, 2017
With effect from 6th March 2017, the new trademark (amendment) rules 2017 came into existence. The intention is to simplify the whole trademark registration process and make it hassle-free and quick, and it would, in turn, expedite the overall process of trademark administration.
E-filing and adding email as an essential part of the address can be seen as an effort to promote digitization further. Along with these, some other noteworthy features of the new rules are:
Salient Features of Trademark Rules 2017
1. Sound marks are made registrable:
The new trademark rules mention, “Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and audible replaying accompanied with a graphical representation of its notations”. Such an application has to be filed on Form TM – A with the sound in an MP3 format. Further, it is necessary to provide musical notes in the application.
2. 3D Marks are made registrable:
It includes the shape and packaging of goods. This kind of application is also filed in Form TM-A.
The new trademark rules mention in this regard:
Where the application contains a statement to the effect that the trademark is a three-dimensional trademark, the reproduction of the trademark shall consist of a two-dimensional graphic or photographic reproduction as follows, namely:
i) the reproduction furnished shall consist of three different views of the trademark;
ii) where the Registrar considers that the reproduction of the trademark furnished by the applicant does not sufficiently show the particulars of the three-dimensional trademark, he may call upon the applicant to furnish, within two months, up to five further different views of the trademark and a description by words of the trademark;
where the Registrar considers the different views or descriptions of the trademark referred to in clause (ii) still do not sufficiently show the particulars of the three-dimensional trademark, he may call upon the applicant to furnish a specimen of the trademark.
3. E-filing is promoted:
As a token of encouragement, a discount of 10% is provided for e-filing. This can be seen as a move to encourage digitization and go paperless.
4. Provisions of well-known marks:
As mentioned in Rule 124, any person can request to enlist a mark as a well-known mark along with a statement of the case, evidence, and documents. The fee for it is Rs. 1, 00,000. The Department of Industrial Policy and promotion shall now maintain a list of well-known marks. It means that a brand can now apply to be included in this list after payment of fees of Rs 1 lakh. This change, in particular, may also help to improve the reputation of India’s IP system and the country’s poor score for the protection of famous marks.
5. Separate Fees structure for an individual/startup/small enterprise and others:
There is a difference of around 50 % in the official trademark fee structure of individual/startup/small enterprises 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 the case of an enterprise engaged in providing or rendering 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 undertaking or business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods in any manner about 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 five 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 exceed two crores rupees.
Medium Service Enterprises:
The investment in equipment is more than rupees 2 crores but does not exceed rupees 5 crores.
Indian applicants need to furnish their financial statements to claim their entity status
“Startup” means
i) an entity in India recognized as a startup by the competent authority under the Startup India initiative,
ii) In the case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation/registration as per Startup India Initiative and submitting a declaration to that effect.
Explanation: In calculating the turnover, reference rates of foreign currency of the Reserve Bank of India shall prevail.
An entity will be identified as a startup:
I) Till up to five years from the date of incorporation.
II) If its turnover does not exceed 25 crores in the last five financial years.
III) It is working towards innovation, development, deployment, and commercialization of new products, processes, or services driven by technology or intellectual property.
6. Expedited processing of application:
Under Rule 34, Applicants can request express registration. The application will be taken out of turn for examination, hearing, and registration on payment of additional fees. It is mandatory to file a request online for this request. DIPP extended the provisions relating to expedited processing of an application for registration of a trademark up to the registration stage. So far, it was only available up to the examination stage.
7. Hearing via Video conferencing:
Under Rule 115, any hearing could be conducted through video conferencing or audiovisual communication. This is a very motivating measure to increase efficiency.
8. Number of forms has been cut down to 8 from the existing 75 forms:
All trademark applications (single class, multi-class, collective marks, etc.) are through the same Form. In contested proceedings like the opposition, rectification is through a single form. It seems to be a very positive step to make the whole process less tedious.
9. Fees increased drastically:
This is the most significant step, and it has been increased by 100% in many cases. For a trademark application in one class, it has been increased from Rs. 4,000/- to Rs. 9,000/-, and you can check the fees details here.
10. E-Service of documents:
Under Rule 18, Communications sent by the Trade Mark office through email will be understood as completed service, and it will not be required to serve documents through a post. This will increase the speed of the registration process and is a highly affirmative measure.
11. Reduced Adjournments:
Under Rule 50, during an opposition hearing, a party is not entitled to ask for more than two adjournments, which will substantially help dispose of matters in time.
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