Ministry of commerce and industry has brought significant changes in current trademark rules which have become effective from 6th day of March 2017. The changes are focused on expediting trademark registration process. The significant changes are as follows:
- Total number of Forms is reduced to Eight (8) from seventy Four (74). The new Trademark forms are:TM-A: Application for registration of a trademark.
TM-M: Application / Request for any miscellaneous function in respect of a trademark Application/ Opposition/ Rectification.
TM-R: Application for Renewal/ Restoration of registration of a trademark or for payment of surcharge towards renewal.
TM-C: Application for search and certificate under section 45(1) of the Copyright Act, 1957.
TM-O: Opposition/ Application for Rectification of the Register/Counter statement/ Refusal or invalidation of a trademark under Geographical Indication of Goods (Regulation and Protection) Act , 1999.
TM-P: Application for Post registration changes in the trademarks.
TM-U: Application for registration of Registered User / Variation of Registered user/ Cancellation of Registered users and Notice of intension to intervene in proceeding in cancellation/Variation.
TM-G: Trademark Agent Registration/Renewal/ Restoration/Alteration.
- Video conferencing has been introduced for conducting Trademark hearing.
- Every office action, including examination reports to be sent on emails.
- Trademark filing fees: Separate fees has been introduced for individual, start up, small enterprise and others. Following table represents the various fees.
Entity Type E-Filing Physical Filing Individual/Startup/Small enterprises 4,500 5000 In all other cases 9,000 10,000
- Well known trademarks: Provisions has been introduced to incorporate a mark as “a well know trademark” list by making an application by paying a sum of 1 lakh rupees. This should be followed by appropriate document.
- Number of adjournment in opposition proceedings: It has been limited to two. i.e. maximum two adjournments can been taken by either party to reduce the time span in opposition. The provision of taking extension for showing of evidence is also ended.
- Proof of evidence: This should be given as affidavit enclosed while filing trademark application, when filed with first date of use.
- Procedure to register as a registered trademark user: It has also become simpler to register oneself as registered user of the trademark apart from the proprietor of the trademarks in accordance to new trademark rules by filing relevance documents such as licensing agreement, deed of assignment etc.
- Sound marks and 3 D marks: Registration of sound mark has provisions to submit sound marks in a MP3 format not exceeding the length of 30 seconds.
With respect to 3 D marks, the applicant need to provide the 2 D representation of the mark from various angles and further the controller may ask to provide a specimen of the 3D marks. The acceptability of 3D marks totally depends upon the satisfaction of the Registrar.
- Renewal: Application for renewal may be filed within one year before the expiration of registration.