Date March 9, 2017
Government of India revises Trade Mark Rules; simplifies trade mark application process

Keeping in line with the ease of doing business initiatives of the Government of India, the Department of Industrial Policy and Promotion on 6 March 2017 notified the Trade Mark Rules, 2017 (Rules) which repeal the erstwhile Trade Mark Rules, 2002 (Erstwhile Rules).

Some of the salient features of the Rules are as follows:

• The total number of TM forms have been reduced to 8 (eight) as against 74 (seventy four) under the Erstwhile Rules;

• The Rules now classify applicants into two categories (a) individuals/ startups/ small enterprises; and (b) others. Under the Rules, ‘startups’ have been defined, inter-alia, as an entity in India recognised as a startup by the competent authority under the Startup India Initiative;

• The TM filing fee for individuals/ startups/ small enterprises is 50% (fifty per cent) lower than those payable by entities falling under the ‘others’ category. The fees for filing a TM application for one mark in one class has been increased from INR 4,000 (Indian Rupees four thousand) to (i) INR 4,500 (Indian Rupees four thousand five hundred) for online filing, and INR 5,000 (Indian Rupees five thousand) for physical filing in case the applicants are individuals, startups or small enterprises; and (ii) INR 9,000 (Indian Rupees nine thousand) for online filing, and INR 10,000 (Indian Rupees ten thousand) for physical filing in case of applicants falling under the ‘others’ category. Additionally, to encourage online filing, fees for physical filing are 10% (ten per cent) higher than online filing;

• The Rules have now introduced a procedure for registration of sound marks;

• Unlike under the Erstwhile Rules where the applicant was required to file a user affidavit in case the use of the TM was claimed prior to the date of application only when called for by the examiner, the Rules now make it mandatory for an applicant to file such a user affidavit in case the use of the TM is claimed prior to the date of application;

• The provision in the Erstwhile Rules to file a form and pay additional government fees if the specification of goods or services exceeded 500 (five hundred) characters has been done away with;

• Modalities for determination of well-known TMs have been laid down;

• The expedited processing of an application is now extended upto the registration stage, unlike under the Erstwhile Rules that permitted expedited processing only upto the examination stage;

• Hearing through video conferencing or any other audio-visual communication devices has been introduced;

• The Rules permit electronic service of documents as sufficient service of documents by the registrar of TMs to the applicant and vice versa;

• To expedite the opposition proceedings, the number of adjournments has been restricted to a maximum of 2 (two) by each party, and each adjournment shall be permitted for a maximum of 30 (thirty) days;

• To cut down delays caused by parties by seeking extensions in the evidence stage, the provisions in relation to seeking extension have been done away with; and

• Applications for renewal of registration of a TM may be filed within 1 (one) year before the expiration of the last registration of the TM along with the prescribed fee, as against 6 (six) months prior to the expiration of the last registration of the TM under the Erstwhile Rules.

The full text of the Rules may be accessed at the following link:

http://dipp.nic.in/English/acts_rules/Rules/trademark_amendment_rule_2017.pdf