In yet another effort to speed up trademark registration process in India, the Department of Industrial Policy & Promotion (DIPP) has proposed revamping of the existing Trademark Rules, 2002 by a new set of Rules. DIPP has published the new set of rules under Draft Trademark (Amendment) Rules 2015. The Draft Rules are open for public comments up to December 19, 2015.
Some of the noticeable features of the Draft Rules are:
- Increase in official fee:
The filing fees and fees for all other trademark proceeding (except for filing a collective mark and notice of opposition) are proposed to be increased by 100%. This means if the Rules are implemented, the current filing fees of Rs. 4000 (approx. USD 60) will be increased to Rs. 8000 (approx. USD 120). Similarly, the current renewal fees of Rs. 5000 (approx. USD 75) will increase to Rs.10000 (approx. USD 150).
- Additional fees for physical filing
To incentivize electronic filing of trademark applications, the Draft Rules provide for levying of an additional 10% fee if the trademark application or other document is filed physically i.e., over the counter at any of the branches of the Trade Marks Registry. While online filing is convenient, and once the Draft Rules are implemented it will be cheaper, the Registry must make concessions in cases where the applicants/registered proprietors are forced to file physical documents due to technical snags with the Registry’s server and also shortcoming in certain cases where online transactions are not possible.
- Claim of “use” needs to be supported by the applicant’s affidavit:
The Draft Rules makes it mandatory for the Applicant claiming use of the mark, to file an affidavit of use along with supporting evidence. Presently, filing of affidavit of use is not mandatory and in practice such affidavit is usually filed only if called for by the Examiner.
- Electronic service of documents:
An official communication sent via email by the Registrar will amount to the applicant being served with such document; so long as the email is sent to the email address provided by the applicant/agent. This is a progressive step as the Registry will move towards an environmental friendly paperless system.
- Description of the trademark in words:
Under the Draft Rules, the Applicant will be required to submit a short description of the trademark. Thus, while filing the application for a device or label and other non-conventional trademarks, the Applicant will need to explain the trademark by providing a short description.
- Expedited processing of application:
Currently the only step of prosecution that can be expedited is the examination of an application. However, the Draft Rules provide for an expedited mechanism at each step. In other words, after filing an application, the applicant can (after paying 5 times the filing fees), move the application to a fast track mode, where the application will be examined in 3 months, the response to the examination report will be considered early, hearing, if required, will be scheduled earlier and the application will also be advertised earlier. In such cases, even the opposition, if filed, will be dealt in a fast track manner.
- Notice of Opposition deemed served if available online:
Currently, an Applicant can file the counter statement only upon service of the Notice of Opposition officially by the Registry. However, the Draft Rules provide that the Notice of Opposition will be deemed served when it is made available on the online records of the Registry.
- Trademark Registry to confer “well-known” status:
As per the draft Rules, a right holder will be able to make a request to the Registrar of Trade Marks to determine a trademark as a “well-known” mark. The request will need to be supported with a statement of case and evidence. The official fee for filing such request has been fixed at INR 1, 00,000 (approx. USD 1500).
- New forms:
Currently there are 75 forms that are used for various actions such as filing an application, filing a multiclass application, change of address, change of name, assignment, etc. The Draft Rules contain only a limited number of forms. Consolidation of forms will consequently save time and effort for trade mark practitioners and will help in reducing unnecessary documentation and their subsequent conversion into electronic format.
The present forms will be replaced with the following forms:
| FORM | CONTENT |
| FORM TM- A | Application for registration of a trademark |
| FORM TM-M | Application/Request for any miscellaneous function in respect of a trademark application/opposition/rectification. |
| FORM TM-R | Application for renewal/restoration of registration of a trademark or for payment of surcharge towards the renewal. |
| FORM TM-C | Application for Search and Certificate under Section 45(1) of the Copyright Act, 1957 |
| FORM TM-O | Application for opposition/cancellation |
| FORM TM- P | Application for post registration changes in the trademarks, such as assignment, amendment for description of goods/services, etc. |
| FORM TM-U | Application for Registered users, etc. |
| FORM TM-G | Application concerning Trademark Agent.
|
- Sound marks:
Under the Draft Rules, sound mark application will be required to be submitted in the MP3 format not exceeding 30 seconds length accompanied with a graphical representation of the sound notations. In this regard, the definition of “graphical representation” has also been revised to include representation in digitized form.
After receiving the comments from the public, the Ministry may amend the draft Rules to address any concerns of the stakeholders that it deems necessary. The final Rules are likely to be notified in the first half of 2016.
Overall the Draft Rules seem progressive as there is simplification of the existing system, removal of delays to some extent and reduction in the carbon footprint due to encouragement of e-filing and service through electronic means. However there are some loopholes. There is a high chance of misuse of the discretionary power given to the Registrar in relation to conferring “well-known” status to a mark as there are no corresponding guidelines that the Registrar must consider to reach a decision. Though a provision for expedited prosecution has been provided, there seem no efforts to expedite the applications filed in the normal course and those that have been pending for years. The funds received from the increased fees if utilized properly can be put to good use by the Registry in hiring more examiners, officials and other staff and improving the infrastructure. It will be a wait and watch to see if there will be a direct relationship between the increased fees and the quality of services provided by the Registry once the Draft Rules are implemented.
Omesh Puri is a Managing Associate at LexOrbis with a significant experience in Intellectual Property Law. Omesh’ s current focus is trademark, copyright and design prosecution, contentious and transactional practice across other IP areas including media and entertainment.