India: Amendments To The Trademark Rules

Last Updated: 19 June 2017
Article by Infini Juridique

The Department of Industrial Policy and Promotion working under the aegis of Ministry of Commerce and Industry have issued a notification, under the ambit of section 157 (4) of the Trade Marks Act, 1999, in the month of March 2017 bringing new Trademark Rules in suppression of and to replace the existing Trade Marks Rules, 2002.

DEFINITIONS OF STARTUPS AND SMALL ENTERPRISE

The Application for Registration can be made through two modes namely Individual and Body Corporate. Two new types of Body Corporate have been additionally identified and defined under the new Rules which are;

Small Enterprise: 2(v): Any enterprise engaged in the manufacture or production of goods or for rendering services and the investment for plant and machinery in such enterprise should not exceed the limit specified for this purpose in the MSME Development Act 2006.

Start-ups: 2(x): An entity in India recognised as a start up by the Competent Authority.

PEOCEDURE FOR REGISTRATION OF SOUND TRADE MARKS RULE: 26(5)

An Application for Registration of a trademark consisting of a 'Sound Note' as a trademark, the same has to be reproduced in 'mp3' format not exceeding thirty seconds accompanied with a graphical representation of its notations.

WELL-KNOWN TRADE MARK: RULE 124

The new Rules also provides for the way and manner in which a Trade Mark can be declared as 'Well-Known Trade Mark'. Any person on an application in the prescribed form and by payment of fees can request Registrar for determination of a Trade Mark as Well Known have to be accompanied by a statement of case containing the documents and evidence relied upon by the Applicant in support of his case. In determination of a Trade Mark to be Well Known the Registrar can also invite objections from the general public to be filed within 30 days from the publication. In case of a Trademark determined as Well Known the same shall be published in journals and the name of the trademark shall be entered in the list of trademarks maintained by the Registrar. Removal of Well-Known trademark shall also take place, if it appeals to the Registrar that such Trademark has been erroneously or inadvertently included or is no longer justified to be in such list. Before removing such Trademark from the list due opportunity of hearing will also be provided to the proprietor of such Trade Mark.

ABOLTION OF OLD FORMS REPLACED WITH  NEW FORM: SCHEDULE 1 & 2

The Schedule 1 to new Rules describes Fees to be paid along with the Forms. Under the new scheme of Rules, the Fees have been increased. Even the series of the Forms and their names have been changed. From approximately 80 Forms in the earlier Rules the news provides only for 12 kind of forms described in Schedule 2 of the Rules. Comprehensive list of forms with all details is also provided. Schedule 3 provides list of forms to be used by the Registrar. Schedule 4 has not witnessed much amendment apart from the increase in the Fees.

E-FILING & E-COMMUNICATION: RULE 13,14,18

The provisions for service of documents through electronic mode have also been incorporated. Rule 14 now provides that communications and documents in relation to Application or Opposition, notices or other documents may be served by the Registrar by sending them by post to the party or by email communication. The delivery shall be deemed as the same would be delivered in the ordinary course of post or the time of sending email. In cases of online filing the expression signing includes digital signature as well.

Keeping in view the digitalization of records and using of digital means the Trade Mark Rules have also incorporated a new provision with regard to Oppositions which provide that, where the Applicant has filed his statement on the basis of copy of notice of opposition made available through official website the requirements of service of copy of the notice of opposition to the Applicant shall be dispensed with. Also herein, realizing  the advancement in technology for the purpose of court proceedings provisions are provided for the provision for video conferencing or through any other audio visual communication devices for hearings 

EXPEDITED EXAMINATION & REGISTRATION: RULE 23, 33, 34, 35

The new Rules have also provided for comprehensive provisions for Examination, Objection to Acceptance, Hearing and Expedited processing of Application.  New time bound mechanism to furnish reply of the Examination Report i.e. one month from the date of receiving the reply has also been provided. No provision has been provided to extend the time limit or any power of Registrar for extending the period of one month for furnishing reply to the Examination Report. 

3D & COLOURED TRADEMARKS: RULE 26

A formalized procedure has been drawn in the new Rules for registering 3D Trade Mark and a Trade Mark claiming combination of colours. Any Trade Mark shall be considered as Three-Dimensional Trade Mark only if the Application contains a statement to that effect. Similar principle applies for Trade Mark if the same consist combination of colours. To claim combination of colours as distinctive feature of the Trade Mark the Application for Registration of Trade Marks should contain a statement to that effect. Similarly a three dimensional trademark for registration should also be accompanied with two dimensional graphics or photographic representations 

OTHER IMPORTANT AMENDMENTS

The Rules for signing of documents has been amended to an extent that any document required to be signed under the new provisions shall be signed by the applicant or opponent or any person duly authorized for the purpose.

Rule 19 and 20 from old Rules have been repealed and a new consolidated provision as rule 18 have been incorporated in the new Rules. The earlier Rule 81 which provides for particulars to be stated in the agreement or assignment for transmission has not been incorporated under the new set of rules.

The provisions for Agency under the new rules have also been changed. In cases of withdrawal by the agent the applicant or opponent must ensure that the fresh address for service must be provided within 2 months of withdrawal of an agent / authorization.. In case of failure to do so, such Application or Opposition shall be deemed to be abandoned. In case of the revocation of authorisation by the applicant or opponent limitation of two months shall apply as well.

An application for the registration of trademark for goods or services should be able to explain with sufficient precision or by description of words and must be able to depict the graphical presentation of the trademark

The time limit for renewal of the registration has been increased from six months to 1 year before the expiry of the registration of the Trademark. Even the earlier provision to extend time for filing evidence in support of opposition has been removed under the new set of rules. 

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.