Highlights of Proposed Amendments to Trademark Law

 

Proposed amendment to Trademark LawThe Ministry of Commerce and Industry on November 19, 2015 has issued a notification, publishing the draft Trademark (Amendment) Rules, 2015 for the purpose of inviting public opinion on proposed changes in the Trademark Rules. The final rules will be notified in January 2016 by Department of Industrial Policy & Promotion after further amendments, if received from concerned entities. This Article seeks to provide the details of the proposed amendments to Trademark Law in India.

The above notification has proposed many significant amendments to Trademark Law of India. The proposed Draft Rules seeks the speedy disposal of applications for registration and also to simplify the complex

The highest impact of the proposed amendments to the Trademark Law will be that almost all the official fees have been doubled. Keeping in mind that the major chunk of cost involved in registering a trademark is the official fee, the entire trademark registration procedure will cost twice as much as it does now.

Proposed Amendments to Trademark Law:

Some of the most prominent and major provisions of the planned draft trademark rules, 2015, are the following:

Fee: Except for filing a collective mark and notice of opposition, the fees for all other trademark proceeding including the filing fees are proposed to be increased by 100%.

Trademark Registration Fees to be hiked from Rs 4,000/- to Rs 8,000/–

Trademark Renewal Fees climbed up from Rs 5,000/- to Rs 10,000/–

Trademark Restoration Fees to be hiked from Rs 5,000/- to Rs 10,000/-

The major change is amendment in Schedule 1 of the proposed rules, which clearly mandates the preference to online filing instead of physical submission as the physical filing would cost more to the applicants as compared to the online filing. According to proposed rules, if the trademark application and forms are filed physically and not submitted in the electronic mode, an extra 10% will be levied against the fees.

Well Known Marks: The another change is that the brand owners will now have an option of going to the Trade Marks Registry to have the declaration of their marks as “well-known” upon payment of valid fee. The Registrar will have the choice to decide whether a mark is well known or not.

Sound Marks: The new draft rules also have proposed the provision for Sound marks under Rule27 (5) which offers that the Sound marks are to be submitted in MP3 format with the graphical symbolization of the same. Applications for sound-marks can now be accompanied by a sound-file in MP3 format. In 2008 Yahoo yodel (of Yahoo Inc.) became the first sound mark to be registered in India.

Fast Processing of Applications: Proposed application fee aims in resulting speedy processing of the other proceedings (hearing, publication, opposition, etc.) till the final clearance of application. The Counter Statement by applicant(s) can be filled to the Notice of Opposition, the moment the same is uploaded on the website of Trade Marks Registry, resulting in quicker disposal of opposition matters. It is not necessary to wait for the Official service of the Notice of Opposition.

Statement of Use: Except those applications filed on an “intent to use” basis, all trade mark applications will be required to contain a statement of use in respect of all the goods and services mentioned in the application. Now it is obligatory, as per the amendment , for the new applications filed claiming use of the trademark (in India) to file an affidavit with supporting documents showing the period of use claimed in the application (at the time of filing the application).

Consolidation of Forms: The draft rules have introduced some significant change in the format and numbering of the Forms. The Forms would be identified on sequential manner such as Form A, Form B instead of the present numerical as Form TM 1, etc. The amendment aims in bringing more systematic way of working. The new 8 forms are as follows:

FORM CONTENT
FORM TM- A For registration of Goods and Services
FORM TM-M Request for any miscellaneous function and amendment in application, authorization of agent.
FORM TM-R Application for all renewal related matters.
FORM TM-C For Search and Certificate.
FORM TM-O Application for all opposition matters
FORM TM- P Applications to dissolve associations, assignment, amendment for description of goods/services.
FORM TM-U For Registered users.
FORM TM-G Related to Trademark Agent.

 

Only Online Notices of Trademark Opposition will be entertained: Earlier the counter statement could be filed by an applicant only upon service of the Notice of Opposition by the Registry. However, the recent Draft Rules offers that the Notice of Opposition will be considered served when it is made available on the online accounts of the Registry. Proposed Amendment to Trademark Law.

Description of the trademark in words: The applicant now may need to submit a brief description in words of the trademark being filed. Proposed Amendment to Trademark Law.

 

Trademark experts say the proposed rules are a mixed bag, but stress upon further need to speed up the process at the trademark office. It could be concluded that the main highlight of the proposed draft rules is the rise in costs and format of Forms to be filed. After receiving the comments from the public, as per the official orders the Draft Rules may amended, if Ministry considers it necessary. While we don’t know if the final Rules will comes into effect retrospective or not. Some of the proposed rules are admittedly welcome as they may turn the process of Trade Mark registration in India being less frustrating. However few of the changes seem to be harsh towards the applicants, for instance 100% increase in costs involved in the process which may affect the great amount of new applications filed by small enterprises. Further, the Draft Rules seem progressive as there is simplification of the current system and reduction in the carbon print due to encouragement of e-filing and facility through electric means.

Comments

comments

Leave a Reply

Your email address will not be published. Required fields are marked *