The Department of Industrial Policy and Promotion (hereinafter referred to as the ‘DIPP’) on March 6, 2017 notified The Trade Mark Rules, 2017, which replaced the erstwhile Trade Mark Rules, 2002. A copy of the said notification can be found over
The present move is clearly aimed at improving and streamlining India’s Intellectual Property regime, and has simplified the Rules, thereby substantially improving the ease of doing business on this front. India ranks behind its BRICS peers (Brazil, Russia, China and South Africa) at 130 on World Bank’s Ease of Doing Business Index as multiple clearances and a maze of rules make it difficult to start and run businesses. The DIPP, under the aegis of the Ministry of Commerce and Industry, has since the start of the term of the Modi government been trying to streamline processes and cut paperwork to boost India’s rankings.
Campaigns like Start-Up India and Digital India, launched last year initially paved the way to encourage the field of Intellectual Property, and with the notification of the present Rules, the DIPP has institutionalized a much refined system that will remove previously faced complexities with fewer forms and improved online filing process.
We had earlier released the gist of the new changes introduced last evening, immediately after the release of the notification, but, in view of the plethora of changes made, it is expedient to explain the Rules in greater detail for the general information of our clients and associates.
The major highlights of the Rules are listed below –
A. Increase in Statutory Fees:
The new Rules have substantially hiked the official fee for obtaining trademark registration in India. The revised costs for certain important actions, along with the previous fees are listed below–
(All Fees applicable are in INR)
B. Discount for Start-Ups:
The new Rules provides for approximately 50% discounts on the statutory fees to individuals, start-ups and small enterprises for new applications as well as filing application for expedited processing. This conspicuous move is a corollary to last year’s Start up Action Plan (SAP), and Startups Intellectual Property Protection (SIPP) schemes, and goes on to further strengthen the Governments promise of last year to make the ecosystem more friendly for entrepreneurs and small entities.
C. Concession on Online Filing
With the objective of increasing online filings, a 10% discount on official fees has been provided for to applicants who choose to file the applications or forms online. This step is also a discernable move by the Government to ensure that it fulfils the promise of the Digital India campaign and Government services are made less cumbersome for citizens by making available to citizens an improved online infrastructure and thereby making the country digitally empowered in the field of technology.
D. Expedited Processing of Applications
The new Rules provides for expedited processing of application which replaces the earlier provision for expedited examination of application. Under the new Rule, an applicant can file a petition to expedite the registration process of an application which means expedited examination, consideration of the response to examination report by the Trade Marks Registry (hereinafter referred to as the ‘Registry’), scheduling of show cause hearing, publication and the opposition thereto.
The provisions relating to expedited processing of an application have been extended right up to the registration stage (previously it was only up to the examination stage.)
E. Well-Known Marks
For the first time, the new Rule empowers the Registry to declare a mark as well-known mark if any applicant or proprietor is interested to be considered for so. The interested applicant/proprietor has to file an application through Form TM- M, and on receipt of any such application the Registry shall determine whether the mark is well-known or not based on the provisions of Section 11 (6) to Section 11 (9) of the Trademarks Act, 1999. Additionally, prior to making a decision, the Registry must invite objections from the general public.
This is also a noticeable improvement on the earlier procedure for getting a mark declared as well-known. Previously, a mark was only declared well-known if it was decided so in a contentious matter. However, for the first time the Rule vests the authority with the Registrar who shall determine whether a mark is well-known or not after receiving a request of such from an interested proprietor on payment of Rs. 1,00,000 ( 1500 US $ approx.).
F. Video Conferencing
The new Rules direct the Registrar to conduct show cause/opposition hearings through video conferencing or any other communication audio-video communication device like cell phones, personal digital assistance or combination of both or any other device used to communicate, send or transmit any text, video, audio or image. In such a case it shall be deemed that the hearing has taken place at the appropriate office.
G. Reduction in the number of Forms
The number of Trademark Forms have been reduced from 74 to 8, thereby making the procedure less cumbersome.
H. E-mail made a part of address for service
E-mail has been made an essential part of address for service to be provided by the applicant or any party to the proceedings so that the office communication may be sent through email.
I. Number of adjournments limited
Number of adjournments in opposition proceedings has been restricted to a maximum of two by each party, which will help dispose-off matters in time.
J. Extension for filing evidence in opposition matters removed
The extensions of one month permissible while filing evidence in support of opposition and application by the opponent and the applicant respectively have been removed.
K. Faster Filing of Counterstatement
If the notice of opposition is obtained electronically, a counter statement can be filed without the same being served by the learned Registrar.
Such an unprecedented move by the DIPP will go a long way to instill some confidence in the entrepreneurial ecosystem, and can be seen as an attempt to integrate Intellectual Property with digital schemes like Digital India.