May 10, 2017
The Government of India in its initiative to draft a new set of rules which are in calibration with the aim of fastening the procedure of trademark filing in India and scraping out the possibilities of delays in this procedure. A notification regarding the draft rules for Trademarks was published by the Government of India in November 2015 inviting objections and suggestions. After a thorough study of all such suggestions and objections, the Central Government has framed the Trademark Rules 2017, thereby replacing the Trademark Rules 2002. These rules came into effect on 6th of March 2017.
In order the achieve its objectives, these are the major changes brought in by the Government of India:
CATEGORIZATION OF APPLICANTS
The foremost major that has been brought in by the Trademark Rules, 2017 is that now there is a clear categorization of the applicants and the fees will be charged as per the applicant’s category, the categories are:
A) Individual/Start-up/ Small Enterprise
In the new rules they have specifically defined what would constitute a start-up and a small-enterprise. The definitions for the same have been given in Rule 2 (v) and (x).
START UP- “the enterprise engaged in the manufacture or production of goods, where the investment in plant and machinery does not exceed the limit of INR 10,00,00,000 and in case of an enterprise engaged in providing or rendering of services, where the investment in equipment is not more than the limit of INR 5,00,00,000.”
SMALL ENTERPRISE-“an entity, incorporated or registered in India, not prior to five years, with annual turnover not exceeding INR 25,00,00,000 in any preceding financial year and working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property. However, if any entity formed by splitting up, or reconstruction, of a business already in existence, it will not be considered as a startup and also, an entity shall cease to be a Startup if its turnover for the previous financial years has exceeded INR 25 crore or it has completed 5 years from the date of incorporation/ registration. A Startup needs to obtain certification from the Inter-Ministerial Board.”
DIGITALIZATION OF TRADEMARK PROCESS
In order to digitalize the entire trademark process, every applicant is required to provide a valid e-mail address along with the postal address in India. The new rules particularly Rules 14, 17 and 18 specifically talk about services via e-mail. The aim is to make the entire trademark registration process virtual. With a view to shorten the entire trademark application process, then entire process is now made online.
CHANGE IN APPLICATION/REQUEST FEES
The 2017 rules have increased the application fees substantially. Majorly all applications/request fees have been increased by 100%. However, a concession on fees of 10% is available in case of online submissions of applications and filings.
REDUCTION IN FORMS
The biggest change is in the reduction of forms. Earlier there were a total of 74 forms relating to trademark applications/request and now it has been reduced to a total of 8 forms. These 8 forms can b filed online as well.
Now with the new rules an application can be made for declaring your trademark as well-known trademark. The registrar on receiving such request will call for oppositions within 30 days. In case it is established to be well-known publication for the same will be made in the trademark journal and it will be included in the well-known trademark list.
SOUND MARKS AND 3-D MARKS
The new rules have provided an application for registering sound marks and 3-D marks as trademark. This is a very big change as sound marks and 3-D marks are now capable of being registered and can be called as trademark.
Another major change brought about in the new Rules is the provision for expedited processing; the entire trademark procedure can be expedited. Under this, the entire procedure including examination, reviewing of reply to examination report, appointment of hearings, advertisement, and opposition, until final disposal of the application would be fast-tracked. The request for expedited trademark registration process can be made online.
HEARINGS THROUGH ELECTRONIC MEDIA
This is another change which is brought in for promoting digitalization, now hearings of various trademark applications can be done through video-conferencing or through any other audio-visual communication devices and this shall be deemed to have taken place at the appropriate office.
LIMITATION ON ADJOURNMENTS
Limitation on adjournments for any hearing or decision had been made to two and this adjournment should not exceed 30 days.
EXTENDED RENEWAL TIME
The new rules have extended the renewal time from 6 months to one year. Now renewal of a mark can be done 1 (one) year prior to the expiration of its registration.
NO EXTENSION TIME IN FILING OF EVIDENCE
The new rules have become little stringent for filing evidence in opposition proceedings. Now delay in such filing will not be accepted whereas in the old rules extension of one month along with respective fees was given.
The new rules have now affixed a few of INR 9000 for all assignment of registered trademark irrespective of the fact whether assignment request is made within 6 months/12 months/after 12 months from the date of assignment.
These changes are substantial changes which will help the Indian Trademark Registration system function more effectively and smoothly. These changes will definitely simplify the entire Trademark Process and encourage more businesses to get their trademarks registered.