New Trademark Rules came into existence with effect from 6 March 2017 to streamline and simplify the entire process for Indian Trademark registration. This would in turn help to accelerate the process of trademark registration in India and make it hassle-free at the same time.
Related: Trademark Registration in India
The new rules introduced by the Department of Industrial Policy and Promotion (DIPP) has replaced the old rules that were implemented since 2002.
The just-out laws are in a way to promote digitization of the entire process through e-filling and the addition of emails as an important part of the address.
Related: 7 basic things every entrepreneur should know about Trademarks
Salient Features:
The noteworthy features of the new Indian Trademark Registration Rule are:
1. Reduced Number of Forms
The number of forms to be filed for Indian Trademark Registration has been reduced from 74 to just 8 forms. The new format has been designed in a manner that its format can be used for multiple types of applications against the rules being implemented in 2002 where a tailor-made format existed for each type of application.
2. Official Fees for Indian Trademark Registration
The has been a hefty hike in the government fees for Indian Trademark Registration. In certain cases even by 400%.
But alongside a lot of concessions have also been provided in different segments.
Applicants have now been classified by their legal status and trademark categories.
- Form TM-A, TM-O, and TM-R only are eligible for per class official fees.
- The new rule waives the Association fee for associating a TM application with other related marks. Nevertheless, it is important to obtain consent for the association of marks.
- The Renewal Fee is now paid one year in advance of renewal failing due to six months under the Trademark Rules of 2002.
3. Encouraging of E-Filing
For every kind of application, the fees for applying through e-filing portals show a 10% reduction from the fee indicated in the physical filing segment.
For instance, the fee for the trademark application for individuals, startups, and small enterprises is Rs. 5000 for physical filing and Rs. 4500 for e-filing, whereas for others the fee is Rs. 10000 and Rs. 9000 for physical filing and e-filing respectively.
4. Concession in Government fees for Start-Ups, Individuals, and Small Enterprises
There has a considerable hike in the official filing fees but a substantial amount of rebate of approximately 50% is provided to individuals, start-ups, and small enterprises as compared to others. The New Trademark Rules, 2017 properly define a start-up and a small enterprise, something which was non-existent in the Rules of 2002.
A Small Enterprise Means:
A. In the case of an enterprise engaged in the manufacture of production of goods, an enterprise where:
- a microenterprise 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
- a medium enterprise, where the investment in plant and machinery is more than five crore rupees but does not exceed ten crore rupees
B. In case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in equipment is not more than the limit specified for a medium enterprise i.e.:
- a micro-enterprise, where the equipment investment does not exceed ten lakh rupees
- a small enterprise, where the equipment investment is more than two crore rupees but does not exceed two crore rupees
- a medium enterprise where the equipment investment is more than two crore rupees but does not exceed five crore rupees.
Explanation 1: It is clarified that while calculating the investment in plant and machinery, the cost of pollution cost, industrial safety devices, research & development, and such other section that may be notified shall be excluded.
Explanation 2: It is clarified that the provisions of section 29B of the Industries (Development and Regulation) Act, 1951 (65 of 1951), shall apply to the enterprises specified in sub-clauses (i) and (ii) of clause (a) of sub-section (1) of this section.
In simple explanation: An “Enterprise” means an industrial undertaking or business concern or some other establishment that is engaged in the manufacture or production of goods in any manner related to any industry specified in the first schedule of the Industries Development Act, 1951 ( 65 of 1951) or are engaged in providing or rendering any services in any such industry.
Small Manufacturing Enterprises: A company in which the plant and machine investment is more than 25 lakh rupees but does not exceed 5 crores.
Medium Manufacturing Enterprise: A company in which the plant and machinery investment is more than 5 crores but not exceeding 10 crores rupees.
Small Services Enterprises: A company in which the equipment investment is more than 10 lakh rupees but does not exceed 2 crore rupees.
Medium Service Enterprises: A company in which the equipment investment is more than 2 crore rupees but it does not exceed 5 crore rupees.
It is considered mandatory for Indian applicants to furnish their financial statements to claim their entity status.
A Start-Up means:
- In India, an entity is recognized as a startup by the Competent Authority under Startup India Initiative.
- For a foreign entity, the company must fulfill the criteria for turnover and period of incorporation in compliance with the Startup India India Initiative along with submitting a declaration to that effect. While calculating the turnover the reference rates of foreign currency of Reserve Bank of India shall prevail. An entity is identified as a startup:
– till 5 yrs from the date of incorporation
– if the turnover does not exceed 25 crores in the last 5 financial years
– if it is focussed working towards innovation, development, and commercialization of new products, processes, or services driven by technology or intellectual property.
5. Establishment of the process for determination of “Well known Mark”
The afresh law provides provisions for determining and declaring a trademark as “well-known”. Anyone can request to enlist the mark as a well-known mark with the statement of the case, admissible evidence, and documents. Rs. 1,00,000 is the government fees for the same. Before determining a well-known trademark the Registrar is eligible to invite objections from the general public to be filed within 30 days from the date of the invitation.
6. Filing Opposition to Registered Trademarks and International Trademark Registrations
The definition of “Opposition” has changed the New Trademark Rules of 2017.
According to the Rules of 2017, the opposition is defined as “opposition to the registration of a trademark, a collective trademark or a certification trademark and includes an opposition to grant of protection to an international registration designating India and opposition to alteration of a registered trademark”.
In case of an opposition, the applicant is eligible to file the counter-statement after the TM-O is uploaded online. Hence this means that now opposition encompasses more and better benefits along with avoiding undue delay caused in serving the notification via the Registrar.
7. Video Conferencing Approved for Hearings
According to the Trademark Rules introduced in 2017, a hearing could be conducted via video conferencing or any other audio-visual mode of communication and shall be deemed to have taken place at the appropriate office. This indeed is a very noticeable measure to increase efficiency.
8. Introduction of E-mail as a Mode of Service
The Trademark Office has now recognized e-mail as the official mode of communication. The message sent by e-mail will be considered a complete service. The department doesn’t need to serve the documents via a post. This is an affirmative measure that will increase the speed of the Indian Trademark Registration process.
9. Limitations Regarding Adjournments
There is an exclusive focus on the speedy redressal of disputes amongst the parties to a dispute for the trademark. Hence, the rule mentions that no party shall be accustomed to more than two adjournments and each adjournment won’t last for more than 30 days. This will indeed assist in the speedy disposal of the conflicts which otherwise has a lengthy and time-consuming procedure.
10. Claim for Trademark Already in Use
As per the new Rules of 2017, it is mandatory to apply for the registration of a trademark which is to be claimed for already in use before the date of filing. Along with this, a user affidavit needs to attach by the applicant. Earlier it wasn’t mandatory to file an affidavit to acquire priority claims and it was completely based on the discretion of the Registrar to ask for the proof of use.
11. Illustration of Sound Marks as Trademarks
The Indian Trademark Registration Office did accept sound marks under the Rules of 2002 but weren’t specifically mentioned anywhere. The new Rules of 2017 now specifically mention the complete procedure for filing a sound mark. The representation of the sound mark that is to be trademarked should be mandatorily submitted in an MP3 format not exceeding 30 secs along with the mark’s graphical representation in its notation.
