The Government of India notified Trade Mark Rules, 2017 with effect from 06 March 2017 with a view to simplify and speed up the entire process of trade mark administration. With a strong thrust towards digitalizing the entire administration incentives have been provided for digital filing and electronic communication. These Rules detail the working of Trade Mark office along with Trade Marks Act, 1999.
As a prelude to these changes, Trade Mark office had recently stopped issuance of physical copies of registration certificates. The digital registration certificates are the proof of registration. Even before this amendment, the Trade Mark office had been gearing up for the change as many visible changes had happened in recent months including faster processing of trade mark application, publication in trade mark journal and issuance of registration certificates.
Some of the salient features of the new Rules are:
- Sound marks are registrable: Form TM – A states that a trade mark application for sound can be filed with the sound in a MP3 format. It is necessary to provide the musical notes in the application also.
- Request to enlist as Well Known mark: Under Rule 124, Any person can make a request to enlist a mark as a well-known mark along with statement of case, evidence and documents. The fees for the same is Rs. 1,00,000/- (around USD 1400).
- Expedited processing of application: Under Rule 34, Applicants can make a request for express registration. On payment of additional fees, the application will be taken out of turn for examination, hearing and registration. Till now, the express provision was limited to issuance of examination report only, after which it was clubbed with other applications awaiting hearing, thereby making the express procedure nugatory. It is mandatory to file a request online for this request.
- Hearing through Video conferencing: Under Rule 115, any hearing could be conducted through video conferencing or any other audio visual communication. This is a very positive step in increasing efficiency.
- Number of forms have been cut down to 8 from the existing 74 forms.: One would how has this been achieved. All kinds of trade mark applications (single class, multi-class, collective marks etc.) is through the same form. Contested proceedings like opposition, rectification is through a single form. This will make things easier.
- Fees have been increased drastically: In many cases it has been increased by 100%. For a trade mark application in one class, it has been increased from Rs. 4,000/- to Rs. 9,000/-. Applicants would not be averse to paying higher fee if the services are immaculate.
- Differential fee structure for a individual/start up/small enterprise and for others: There is a difference of around 50 % in the fee structure. For a trade mark application in the first category, the fee is Rs. 5000 whereas in the second category is Rs. 10,000/-.
- Differential fee structure for physical filing and online filing: For online filings, there is 10 % reduced fees at all stages. This will discourage paper filing in sync with the push towards digital India reducing its carbon print.
- E Service of documents: Under Rule 18, Communications sent by Trade Mark office through email will be construed as completed service. It will not be required to serve documents through post. This will increase the speed of registration process and is a very positive step. There is no problem of documents lost in transit.
- Reduced Adjournments: Under Rule 50, during an opposition hearing, a party is not entitled to ask for more than two adjournments. This will reduce the time for decision in cases substantially.