KEY FEATURES OF NEW TRADEMARK RULES- BY CS DIVYANSHU SAHNI

    admin 25 Mar 2017 0

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    KEY FEATURES OF NEW TRADEMARK RULES.

    With effect from 6th March 2017, the new trademark rules came into existence. The intention is to simplify the whole trademark registration process and make it hassle-free and quick. It would in turn is expected to expedite the overall process of trademark administration.

    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.

    Highlights of the New Trademark Rules:

    1. Application forms and formats

    Applications have seen a sea change so as to suit them with the new amendments. Old forms, approximately 60, have been scraped away, replaced by eight new forms TM-A, TM-O, TM-P, TM-C, TM-U, TM-G, TM-M, and TM-R.

    1. Sound marks are made registrable:

    The new trademark rules mentions, “Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations”. Such application has to be filed on Form TM – A with the sound in a MP3 format. It is necessary to provide the musical notes in the application.

    1. 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.

    1. Fees have been increased drastically

    To encourage online filing of applications, a 10% fee concession will be offered. For individuals, startups and small enterprises, the government will provide discounted application fees and expedited processing.

    For Body Corporates,  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.

    Explanation:

    Here the meaning of Small Enterprise is:

    1. a) in case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006); and
    2. b) In case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for a medium enterprise under clause (b) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006.

    Explanation: “enterprise” means an industrial undertakings or a business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods in any manner pertain to any industry specified in the first schedule to the Industries (Development and Regulation) Act, 1951 (65 of 1951) or engages in providing or rendering or any services or services in such an industry.

    Small Manufacturing Enterprises: The investment in plant and machinery is more than twenty five lakh rupees but does not exceed rupees 5 crores (Rupees five crores only).

    Medium Manufacturing Enterprises: The investment in plant and machinery is more than rupees 5 crores but not exceeding Rs.10 crores (Rupees ten crores only).

    Small Service Enterprises: The investment in equipment is more than 10 (Ten lakh rupees) but does not exceeds rupees 2 crores

    Medium Service Enterprises: The investment in equipment is more than rupees 2 crores but does not exceed rupees 5 crores.

    Indian applicants need to furnish their financial statements in order to claim their entity status

    “Startup” means

    1. i) an entity in India recognized as a startup by the competent authority under Startup India initiative,
    2. ii) In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation / registration as per Startup India Initiative and submitting declaration to that effect.

    Explanation: In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail.

    An entity will be identified as a startup:

    1. I) Till up to five years from the date of incorporation.
    2. II) If its turnover does not exceed 25 crores in the last five financial years.

    III) It is working towards innovation, development, deployment, and commercialization of new products, processes, or services driven by technology or intellectual property.

    1. Renewal Fee

    Renewal fee which originally was Rs. 5000 has now been revised to Rs. 9000 for e-filng and Rs.10,000 for paper filing.

    1. E-Service of Documents

    Email has been made an essential part of the address for service towards our aim to digitise processes and go paperless.

    1. Videoconferencing facility Introduced

    The option of conducting hearings through video conferencing has been introduced.

    1. Reduction in the Number of Adjournments

    The number of adjournments that can be sought in opposition proceedings has been restricted to two by each party to help dispose matters speedily.

    1. 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.

    1. Request to enlist as Well Known mark:

    As mentioned in 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 fee for it is Rs. 1, 00,000. The Department of Industrial Policy and promotion shall now maintain a list of well-known marks. It means that a brand can now apply for being included into this list on form TM-M after payment of fees of Rs 1 lakh. This change in particular may also help to improve the reputation of India’s IP system and the country’s poor score for protection of famous marks.

     

    CONCLUSION:

    The new Rules have expressly promoted digital filing which will make the process efficient and shorter. The electronic services provided will expedite the processing of applications as all the documents shall be furnished and received (exchanged) via e-mails. This will enable faster registration.

     

     

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