The Ministry of Commerce and Industry of the Government of India has recently updated the Trademark rules. The new tradeonlinemarket Rules, 2017 came into effect via a Govt. notification on March 6th and will replace the Trademark rules, 2002.
Among the notable changes made, the process of filing for a trademark has been simplified but at the same time, the fees for filing a trademark have been hiked significantly, while making concessions for individuals, Startups and small enterprises.
Here is a list of the most notable changes made in the new Trademark Rules:
- Trademark application process simplified: Under the new rules, the process of filing a trademark application has now been simplified. Accordingly, the 75 separate forms and applications which were employed earlier for carrying out various tasks have now been replaced by 8 consolidated forms, thereby streamlining the whole filing process.
- Fees for filing a trademark hiked to 150%: The application fees for trademark registration have been raised to 150% of the previous rates. The new fees for a trademark application are now Rs. 10,000. It is noteworthy here that E-filing of Trademarks has been incentivised through a special rate of Rs. 9,000 as fees for a trademark application when filed online. However, a special rebate of 50% has been given to Individuals, Startups and Small Enterprises.
- Individuals, Startups and Small Enterprises get concession in Trademark fees: Significant concession has been given to individuals, startups and small enterprises filing for a trademark. For qualifying startups, individuals and small enterprises, the new Trademark fees are Rs. 5,000 and Rs. 4,500 for physical filing and E-filing respectively.
- Small Enterprises and Startups defined: For the purpose of the above-mentioned concession, small enterprises and startups have been defined in the new rules, as follows: A small enterprise is an enterprise engaged in the manufacture or production of goods, where the investment in plant and machinery does not exceed the limit of Rs 10,00,00,000 and in case of an enterprise engaged in providing or rendering of services, where the investment in equipment is not more than the limit of Rs 5,00,00,000. A startup means an entity, incorporated or registered in India, not prior to five years, with annual turnover not exceeding INR 25,00,00,000 in any preceding financial year and working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property. However, if any entity formed by splitting up, or reconstruction, of a business already in existence, it will not be considered as a startup and also, an entity shall cease to be a Startup if its turnover for the previous financial years has exceeded INR 25 crore or it has completed 5 years from the date of incorporation/ registration. A Startup needs to obtain certification from the Inter-Ministerial Board.
- Expedited process for Trademark Registration: According to the new rules, the Government has introduced an expedited process for Trademark registration under Rule 34. This provision is only available for E-filing of the application. The Government fees for expedited processing of trademark application are Rs. 20,000 for individuals, startups and small enterprises, and Rs. 40,000 for all others.
- Fees for Opposition, Rectification and Renewal of Trademark also hiked: Government fees for notice of Opposition or application for Rectification have been hiked and are now Rs. 3,000 and Rs. 2,700 respectively for physical filing and E-filing. The fees for Trademark renewal have also been raised to Rs. 10,000 and Rs. 9,000 respectively for physical filing and E-filing.
- Applicant’s Affidavit will be required to claim ‘use’: Under the previous rules, it was the Examiner’s discretion to call for Affidavit claiming the use of a particular mark. However, the new Rules have made it mandatory for the Applicant to file an Affidavit along with the supporting evidence to claim use of the mark. Therefore, if an application is to be filed claiming usage in India, an affidavit with evidence of use has to be submitted along with the application.
- Sound marks too can now be registered: The new Trademark Rules provide for filing applications for sound marks, which must now be submitted in an MP3 format, not exceeding 30 seconds in length. This is also to be 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.
- Request to enlist as Well Known mark: Under Rule 124, any person can make a request to enlist their mark as a well-known mark along with statement of case, evidence and documents. The fees for the same is Rs.1,00,000/- (around USD 1400).
- Reduced Adjournments: Under Rule 50, during an opposition hearing, a party is not entitled to ask for more than two adjournments. This will reduce the time for decision in cases substantially.
