Categorization of Applicant–
The Trademark Rules 2017 has classified Applicants for the purpose of the Trademark Application in two categories:
- Individuals/ Startups/ Small Enterprises and
A “Startup” for the purpose of the Trademarks Rules means an entity in India recognized as a startup by the competent authority under the Startup India initiative. Ideally it is 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..
A “Small Enterprise” is defined as:
(i) 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
(ii) In case of an enterprise engaged in providing or rendering of 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.
The MSME Act (Section 7) has provided for three kinds of enterprises:
- a micro enterprise, where the investment in plant and machinery does not exceed twenty-five lakh rupees
- a small enterprise, where the investment in plant and machinery is more than twenty-five lakh rupees but does not exceed five crore rupees; or
- a medium enterprise, where the investment in plant and machinery is more than five crore rupees but does not exceed ten crore rupees;
Under the new TM Rules a Small Enterprise is one whose investment does not exceed the limit specified for a medium enterprise. This would mean that a micro enterprise, a small enterprise and a medium enterprise under the MSME Act would fall within the purview of the ‘Small Enterprise” in the new TM Rules
All other applicants will fall under the category of “Others”.
Hike in official filing fees
One of the most conspicuous change brought under the 2017 Rules is the substantial increase in the official fee for filing forms and applications.
The official fee for filing trademark applications for ‘Individuals’, ‘Start-ups’ and ‘Small Enterprises’ the official fee for filing will be Rs. 5,000. For “Others” fee has been hiked from INR 4,000 to INR 10,000.
The official fees for online filing of applications is however 10% lower than physical filing and fixed at INR 9,000 for “Others” and INR 4,500 for “Individuals”, “Start-ups” and “Small Enterprises”, with a view to encourage more online filings.
No fee for additional characters in the specification of goods/ services
Applications for Trademark can be now filed for a large variety of goods and services in a class and no fees is payable for the excess characters over 500 in the specification of goods/ services as specified in the 2002 Rules.
However in case an application for registration is filed for all the goods or services included in a class or of a large variety of goods or services in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the trademark which the applicant has made or intends to make if and when it is registered.
The 2017 Rules also makes it mandatory for the applicant to file an affidavit testifying to use of the trademark along with supporting documents, if mark is filed claiming use.
Electronic Serving of Documents
Trade Marks Office will now be serving documents electronically via email as opposed to physically serving them and e-mail has been made essential for office communication.
Expedited Prosecution of Applications
Under the 2002 Rules only examination of an application could be expedited. The 2017 Rules provide for the applicant to request for expedited processing of application on payment of fees (INR 20,000/- for Individuals, Start Ups and Small Enterprises and INR.40,000/- for Others. Such an application will be examined expeditiously and ordinarily within three months from the date of submission of the application. Thereafter, the rest of the proceedings viz. the consideration of response to the examination report, scheduling of show cause hearing, if required, the publication of the application and the opposition thereto, if any, till final disposal of the application shall also be dealt with expeditiously.
Number of forms cut down
The New Rules have prescribed formats that could be used for multiple types of applications, as against the 2002 Rules which had tailor made formats for each type of application, thereby cutting down the number of forms to 8 from the existing around 75 forms. All kinds of trade mark applications (single class, multi-class, collective marks etc.) have to be filed through the same form. Contested proceedings like opposition, rectification shall also be through a single form.
Application for Renewal of registration of a trademark can now be filed within one year before the expiration of the registration of the trademark as against the 6 months time period prior to the expiration of the trademark provided in the old Rules.
Notice of Opposition
The 2017 Rules provide that a copy of notice of opposition shall be served by the Registrar to the applicants within three months of the receipt of the same by the office. However the applicant need not wait for the notice of opposition to be served on him and has the option to file the counter statement on the basis of the copy of same made available in the electronic records on the official website. In such case the requirement of service of copy of the notice of opposition to the applicant has been dispensed with.
Number of hearings
Parties are not entitled to ask for more than two adjournments during an opposition hearing.
Hearing could be conducted through video conferencing or any other audio visual communication.
No extension for filing Evidence in Opposition Proceedings
The 2017 Rules do not provide for extension of time for tendering evidence in opposition proceedings, to facilitate speedy disposal in opposition proceedings.
Evidence in support of opposition has to be filed within two months from service of a copy of the counterstatement. Opponent is also required to deliver to the applicant copies of any evidence including exhibits, if any, that he leaves with the Registrar and also intimate the Registrar in writing of such delivery. If an opponent takes no action within the time mentioned, he shall be deemed to have abandoned his opposition.
Evidence in support of application has to be filed within two months on the receipt by the applicant of the copy of affidavit in support of opposition. In case the applicant adduces any evidence or relies on any evidence already left by him in connection with the application, he has to deliver to the opponent copies of the same, including exhibits, if any, and has to also intimate the Registrar in writing of such delivery.
Even though applications for Sound Trademarks have been filed in India earlier, there was no specific reference in the 2002 Rules to the registration of Sound marks. The New Rules have introduced specific provisions for their registration. In case of application for the registration of a sound as a trademark the applicant has to reproduce the sound in MP3 format which allows for easy and clearly audible replaying and it shall not exceed 30 seconds accompanied by a graphical representation of the sound notations.
Application for 3D marks (e.g., shape and packaging of goods) can be made by furnishing a two-dimensional graphic or photographic reproduction of the trademark. The applicant also has to furnish three different views of the trademark.
If 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.
Search Certificate for artistic work used on goods/ services
A certificate to the effect that no trademark identical with or deceptively similar to an artistic work used on goods/ services, and sought to be registered as copyright shall now be issued by the Registrar of Trademarks within thirty working days of the date of request.
A request for expedited search certificate may also be filed by paying fee of INR 30,000 in which case the Registrar shall issue such certificate within seven working days.
Notice of Withdrawal of Application
Under the new Rules, Applicants can file for a notice of withdrawal of an application for the registration of a trademark and obtain repayment of fee paid on the filing of the application if such notice is given in writing within one month from the date of the receipt of examination report.
Re-advertisement of Trademarks
The 2017 Rules provide for re-advertisement of Trademarks in case of major errors in the advertisement in respect of the trademark or specification of goods or services, or class or statement of use of the trademark or in any other case except for any trivial spelling mistakes. The earlier advertisement in such case would be cancelled.
Association fees taken away
No fee is required to be paid for associating trademarks under the New Rules.
Prescribed Process for Determination of “Well Known Mark”
Under the old law a mark could be declared as a “Well Known Mark” in India only through a trade mark infringement dispute in a court of law. The Trademarks office has also published a list of such “Well-known Trademarks” in its official website. Under the 2017 Rules trade mark owners can make an application to the Registrar claiming status of a well-known trademark. The official fee for such an application has been prescribed at INR 1,00,000. Such application has to be filed along with a statement of case and relevant evidence, which support the claim of the mark’s well-known status. Before determining a trade mark as “well-known”, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objections.
Re-classification in respect of existing registration
In case of an amendment in international classification of goods and services (NICE Classification) the registered proprietor of a trademark can apply to the Registrar for the conversion of the specification of goods and services relating to the trademark, so as to bring that specification into conformity with the amended classification. The amendment in the specification of goods or services or in the classification if approved will be advertised in the Journal.
The Trademarks office had introduced several new initiatives last year that has helped effective disposal of pending matters and also speedy examination of new applications. The new Rules have now bought out many significant changes in procedural law which we expect will bring in a positive change and provide for speedy disposal of pending matters as well as new filings.