December 22, 2017
The Department of Industrial Policy and Promotion (DIPP) on March 6, 2017 had notified the Circular issuing New Trademark Rules, 2017.
Key highlights of the New Trademark Rules are enumerated below:
Sound Trademark statutorily recognized– The New Trademark Rules statutorily recognizes and mentions about sound trademarks in India. Rule 26(5) of the Rules in this context states that where an application for registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in MP3 format not exceeding 30 seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.
Here it would be relevant to mention that earlier sound trademarks have been registered (Yahoo! Yodle, ICICI jingle), however specific requirements for filing sound trademark have been specifically enlisted for the first time.
Hike in Trademark Filing Fees structure- First Schedule of New Trademark Rules provides for a significant hike in filing of trademark applications and allied applications. For instance, the filing fee of a mark in one class has been increased from Rs. 4000 to Rs. 10000.
The revised fee structure to file a trademark application can be accessed here.
Subsidized filing fees for individuals and startups- The Schedule demarcates fee structure for individuals, startups and others. For instance, Filing fee for individuals and startups is Rs. 5000 only.
E-filing Incentivized- Online filing of trademarks has been discounted by 10% in a move to encourage online filing.
To file a trademark online go here.
TM can be filed as well- known marks– The New Rules lays down provision for filing marks as well known. Rule 124 provides that an applicant may request for determination of a mark as a well-known mark accompanied by a statement of case alongwith evidence and documents and prescribed fee of Rs. 1,00,000.
Express Registration of applications- Another interesting feature incorporated under the New Rules in Rue 34 which provides for expedited processing of applications. It provides for examination of application within 3 months from filing and expeditious processing thereafter. The Rules also empowers the Registrar to limit the number of applications accepted for express registration.
Electronic service of documents recognized- Keeping pace with the rapid technological advancement, the New Rules also recognizes receipt of e-mails as a valid service of documents by the Registrar. This provision would further aid in expediting processing of applications.
Hearings through Video Conferencing- New Rules (Rule 115) provide for hearings through mode of video conferencing and other audio- video communication devices.
TM Forms reduced- Trademark Forms have been slashed from 74 to 8.
Limited Adjournments- Rule 50 limits the number of adjournments by an applicant to two and further provides that adjournment can be sought only on mentioning of reasonable cause by the applicant.
The New Rules reflect every endeavor to make the processing of trademark applications digitized, less complicated and speedy. The Rules enumerate some major and noteworthy inclusions like subsidized filing fee for startups. This provision would apart from encouraging startups protect their IP would also assist in making India an IP- intensive nation.
Bulky and cumbersome procedures involved in processing of TM applications have often been cited as a major loophole in enforcement and protection of trademarks in India. The latest rules curtailing the frequency of adjournments and integrating precepts like hearings through video conferencing, e-service of documents by Registry and discounted fees for e-filing would make Indian IP Law more lucid and less intricate.