In 2015 news about fee hike for Trademark application surfaced along with other amendments, but in 2017 finally Trademarks Rules are now amended and were notified on 6th March 2017.
Let us understand what are the major changes that are being done in Trademark Rules in India for 217.
1. Division in Applicant category
Initially when any Trademark application was filed, the applicant was required to specify its details but there was no implication over the fees based on applicant’s legal status. But now the applicant’s are also categorized in accordance to their legal status.
For individual, start-ups and SME’s the fee for e-filing has been increased to Rs 4500 per class, and for entities like private limited company, Limited liability partnerships and any other form of body corporate the fee has been increased to Rs 9000 per class.
The fee hike for the body-corporates might prove a setback for startups and other SME’s as you can only claim the benefit of fee concession in case you have a startup certification obtained from inter-ministerial board or certificate of SME from ministry of MSME, which generally startups do not have.
2. Reduction in number of forms
In the new Trademark rules the number of forms has been drastically reduced to 8 from 78, and single form has been supplied for multiple actions, for example initially there was 1 form prescribed for Trademark application in India TM-1 and another form was required for filing application in multiple classes, convention application and so on. Now a single form TM-A has been introduced for number of purposes.
Namely TM-A can be used for Trademarks application,Convention application,Multiclass convention application,Multiclass, Series mark in a class or multiclass, Series mark from convention country in class or multiclass and Collective mark etc.
3. Claim of Usage
Initially the trademark application TM-1 applicable earlier, the applicant was allowed to claim usage even before the date of filing of application and it was the prerogative of the Examiner to call for affidavit of usage. But now this has been amended and in case the applicant is willing to claim usage before the date of filing of trademark application in the new form it is mandatory to attach the affidavit of usage to substantiate their claim on user details as filed in new form TM-A.
So, now it is advisable to file a Trademark application as soon as you intend to use it. As preparation of affidavit of usage requires lot of evidences and statement of facts making it a time consuming and difficult process.
4. Serving of documents
Earlier the applicant was allowed to file for reply of examination report or file for counter statement once he/she actually receives the physical copy of the notices. But now in case the examination report or notice of opposition is now uploaded on ipindia.nic.in website and is available online, the applicant need not to wait for the serving of document and may proceed to file a reply.
This has in a way reduced the proceeding time of trademark examination process and opposition proceedings, but also has curtailed the freedom of applicant to claim the extension against the plea that he/she was not constructively aware of such notice and the Examiner shall grant him the leave to file for the replies or trademark objection reply at later stage. But we believe that now this plea will not hold good and strict deadlines will be followed.
5. Reduction in number of adjournments
Initially, there was no bar on adjournments but now the parties need to request for the adjournment along with prescribed fees and it is further notified that no party shall be given more than 2 adjournments and each adjournment shall not be more than 30 days. This will surely expedite the process of Trademark proceedings.
6. Change in Renewal filing
Earlier the applicant was allowed to file for a renewal of a trademark application only 6 months before the expiry date, however, this has now been changed to 1 year before the expiry which gives much time for the applicant to renew the Trademark application timely.
7. Recognition as a Well-known mark
In previous Trademark legislation, well known marks were chosen by the court but in Trademark rules 2017, anyone can apply for recognition of their brand as well known under rule 124 by payment of Rs 1 lakh along with the supporting documents, evidences and statements of case.
8. Correction in application will cost more
Initially the applicant was able to correct any clerical error in application by way of filing of TM-16 form, however, now the fee for any correction request has been increased from 500 Rs to 900 Rs. So be careful about filing of Trademark Application.
Over all the Trademark rules are modified in tune to Patent rules 2015, like segregation of applicant category and applicable fees also an effort is made to make the process of registration fast, but a steep hike in government fees for corporate may prove to difficult for startups to go for registration of brand name on the name of the company.
This steep increase in fees will also make it riskier for individuals/companies to get their Trademark registered by novice lawyers or CS, its crucial to hire an expert attorney to get the job done.
(Disclaimer: This is a guest post submitted on Techstory by the mentioned authors.All the contents and images in the article have been provided to Techstory by the authors of the article. Techstory is not responsible or liable for any content in this article.)
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