India: Analysis Of New Indian Trademark Rules 2017

Last Updated: 21 April 2017
Article by Himanshu Sharma

Most Read Contributor in India, December 2018

The recent amendment in the Indian Trademarks Rules, 2017 was in discussion for the long time and the changes were long overdue. The new Rules have made the procedure for the prosecution of the Trademark in India a little bit less confusing. There is a special focus in the Rules to make Indian Trademark Office, a paperless Office. Further there is also focus on making the process for registration of trademark less time consuming and transparent by giving special privilege to the Applicants for online filing of the trademark and more reasoned redressal of prosecution of trademark. The major changes in the Trademark Rules are discussed below:

1. Reduction in Number of Forms: In the Trademark Rules, 2002 there were 75 different forms for the various procedures relating to the trademark registration and prosecution. It includes different types of trademark application, application for the post-registration procedures etc. In the Trademark Rules 2017, the numbers of forms are reduced to mere 8 types and divided according the procedures for which a Form is to be filed. The move to reduce Forms will certainly make the process for a laymen little bit less confusing. The forms available for the online filing are very much interactive in nature and a person with limited knowledge can certainly file an application for the registration of trademark without any help of a professional. The categories of forms after the amendment are as mentioned below:

2. Change in Official fee with special focus on popularizing online filing: The Official fee for almost all the procedure related to the trademark filing and prosecution is significantly increased. The new Rules of 2017, promotes the online filing and making Indian Trademark Office a paperless office hence there is a discount of 10% on all the online filing in comparison to the over the counter filing. The fee for the filing a new trademark is also categorized on the basis of the type of Applicant. Government of India's special initiative for

the start-ups is also given importance and hence the fee for small and medium enterprises and startups, is significantly less than that of Corporate.

3. Consideration of Communication through email as official communication: under the new Rules, Indian Trademark Office has also recognized email communication as the official mode of communication. For the same, an Applicant/Agent has to provide an email address at the time of filing of an application and all the official communication will be sent to the Applicant/Agent on this email. The deadline to respond to the Official communication will be counted from the date of communication of email to the Applicant/Agent. This is also a step in the direction of making Indian Trademark Office a paperless office as an Applicant can also file replies to the examination report and other communication from Indian Trademark Office through online portal of Indian Trademark Office.

4. Procedure for recognition of a well-known trademark: Under the new Rule 124 of 2017, an owner of a trademark can apply to Indian Trademark Office, to recognize his trademark as a well-known trademark by paying an official fee of INR 1,00,000/-. Until now, a trademark can be recognized as a well-known trademark by a court in a proceeding related to trademark infringement. An owner of trademark can file an application to this effect along with all the evidences and documents on which the Applicant wants to rely in support of his claim. The Registrar will go through the application and may ask for the additional document and evidences in this regards from the Applicant and if satisfied with the claim, can determine the trademark as a well-known Trademark. The Registrar can ask public for objection against the said application and within 30 days any person can object the application. The Registrar on acceptance of a trademark as a well-known trademark will publish it in Trademark Journal.

5. Renewals: under the earlier Rules of 2002, a registered trademark becomes due for renewal six months before the expiry of the trademark. Now under new Rules of 2017, a trademark becomes due for renewal before 1 year from the date of expiry of renewal. Now there is a window of one year to file a renewal for the registered trademark without any surcharges. Therefore as per new Rules, a renewal can be filed for a trademark from the beginning of 10th year of registration of a trademark and will be valid till the expiration of 10th year. The fee for the renewal of Trademark is also doubled under the new Rules from INR 5000 per class to INR 10000 per class.

6. User Affidavit for a trademark claimed to be in used before filing of a trademark: under the new Rules of 2017, an application filed for the registration of a trademark, which is claimed to be in use before the date of filing, shall be accompanied by a user affidavit from the Applicant in this regards. Earlier it is not mandatory to file an affidavit for a trademark claimed to be in use and it is on the discretion of the Registrar to ask for the proof of use of trademark but under the new Rules of 2017, it is mandatory to file an affidavit for the use of trademark, if claimed to be in use before the date of filing.

7. Specific recognition of the sound marks under the new Rules: Sounds marks were accepted in India under Rules of 2002 but same were not specifically mentioned anywhere under the Rules. The new Rules of 2017, have now specifically mentioned the procedure for filing a sound mark Under Rule 26 (5) of 2017 Rules. Here it is mentioned that the reproduction of a sound mark should be submitted in an MP3 format not exceeding 30 seconds along with the graphical representation of its notation.

8. Limitation as to seeking adjournments: The new Rules of 2017, has a special focus on the speedy redressal of disputes amongst the parties to a dispute for the trademark hence under the new Rules 50 of 2017, it is mentioned that no party shall be given more than two adjournment and each adjournment will not be more than thirty days. This will help in speedy disposal of the oppositions which has a lengthy and time consuming procedure.

9. No extension of time in Opposition proceedings: The Opposition proceeding under the Rules 50 to 52 of 2002, had provisions related to the extension of time but the same are now done away with, under the new Rules of 2017. There are no provisions related to the extension of time for filing evidences in the Opposition proceedings hence if a party to the proceeding does not file evidences or failed to intimate the Registrar that he wishes to rely on the documents already filed, within stipulated time period provided under the Rules 45 to 47 of new Rules of 2017, then it will be deemed that he has abandoned his application/opposition.

10. Removal of fee for additional classes while filing application recordal of assignment in a multiclass application: As per new Rules, Official fee for filing recordal of assignment in a multi class application will bear fee for only one class and fee for additional class, which was required to be paid under old Rules of 2002 is now not applicable. For example, if a trademark is registered under 5 classes through a multiclass application and same is assigned by the original owner. The Assignee in this case requires filing application for the recordal of assignment to enter his name as the owner of the trademark in Register. As per new Rules of 2017, the Assignee has to pay a fee of INR 10000 only and not for additional classes as happened earlier under Rules of 2002.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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