Salient features of New TM Rules 2017

1 SALIENT FEATURES OF TRADEMARK RULES' 2017  Number of Forms have been brought down from 74 to 8  Official Fees for Trade Mark Registration: There has been a considerable hike in the Government fee structure. Applicants are now been categorised as per their legal status and the Government fee differs for such categories. - Per class official fee is now applicable only to requests made in TM-A, TM-O and TM-R. - The New Rules' 2017 waivers the Association fee for associating a TM application with other related marks. However, it is important to obtain consent for association of Marks. - Renewal fee can now be paid one year in advance of such renewal falling due as against six months period under Rules 2002.  Reduction of Fee for Start Ups, Individuals and Small Enterprises: The "Start ups" and "Small Enterprises" are defined in Rule 2 (x) and (v). Applicants falling in the above categories can avail fee concession.  Promotion of E-Filing: In order to promote e-filing system, 10% reduction from that of the physical filing is provided in the Government fee structure.  Process for Determination of "Well Known Mark" Established: Rule 124 lays down the proviso for determining "Well known trademark". Under the New TM Rules, trade mark owners can make an application to the Registrar to obtain the status of "Well known Trademark". Prior to enactment of New TM Rules' 2017 "Well known trademark" were declared only by the Court of law in a disputed TM matter.  Filing of Opposition to Registered Marks and International Registrations: Definition of "Opposition" under New TM Rules'2017 encompasses a broader area and is defined as: "Opposition" means an opposition to the registration of a trademark or a collective trademark or a certification trademark, as the case may be and includes an opposition to 2 grant of protection to an international registration designating India and opposition to alteration of registered trademark" In case of an opposition, the applicant may file the counter statement once TM-O is uploaded online. This avoids undue delay caused in serving the opposition notification through the Registrar. The new TM Rules have done away with the mandate to file counter statement only after having being served by the Registrar.  Allowance of Video Conferencing for Hearings: Rule 115 of New TM Rules'2017 provides that the hearing may also be held through video-conferencing or through any other audio-visual communication devices and in such cases the hearing shall be deemed to have taken place at the appropriate office."  Recognition of Email as a Mode of Service: Rule 14 of the New TM Rules' 2017 provides as follows: "(1)All applications, .... may be delivered by hand or sent through the post by a prepaid letter or may be submitted electronically in the manner as laid down by the Registrar.  Rule 18 (2017) also refers to E-mails. (Service of Documents by the Registrar)  Regarding Adjournments: Under Rule 50 (2017) no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days."  Filing of Statement of User: Rule 25 (2017) reads as follows: "(1) An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application. (2)In case, the use of the trade mark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents." While the 2002 rules left it to the discretion of the Registrar, the 2017 rules make it mandatory for the applicant to file an affidavit testifying use. 3  No Extension of Time for Filing Evidence in Opposition Proceedings Relevant portion of rule 45 (2017) reads as follows: "...(2) If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition." Rule 50(3) of 2002 relating to one month extension of time has been excluded, thereby implying that applications for extensions for filing evidence in support of opposition is no longer acceptable. While the above analysis was in the context of "Evidence in Support of Opposition", the same reasoning holds for "Evidence in Support of Application"(rule 46(2017)). The corresponding provisions have the same structure.

Published on 6 July 2017

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