The Trade Mark Rule 2017 came into force on March 6, 2017 with several changes to the existing trademark practice. While there are numerous amendments, I’ve listed the top six changes

Classification of Applicants

The Trademark Rules 2017 has specified the Applicants for the purpose of the Trademark Application in two categories, Individuals/ Startups/ Small Enterprises and Others. ‘Startup’ and ‘Small Enterprises’ has been defined under the definition clause. It applies to both Indian and Foreign entities.

Startups 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.

Small Enterprises are the enterprise engaged in the manufacture or production of goods, where the investment in plant and machinery does not exceed the limit of INR 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 INR 5,00,00,000.

Sound Marks

Prior to the Trademark Rules 2017, the practicality of registering sound marks were quite difficult. While applicants would file applications to record sound marks by representing them graphically [the notes] or by spelling out the tune, but now the amended Rules has introduced the facility for the registration of a Sound mark.  In the Trademark Application for a Sound mark, the Mark will be required to submit in the MP3 format not exceeding 30 seconds’ length along with a graphical representation of the sound notations.

Expedited Processing of Trademark Application

Earlier, only the examination of an application could be expedited. Several applicants who ended up the fee to expedite the process would have an examination report issued in weeks but would have to wait for the rest of the process to take place serially based on the applications. The amended Rules now provide for the expedited process at each step. Request for expedited processing of application may be made for the registration of a trademark in Form TM-M mentioning the reason for expedited examination and on payment of fee which is 5 times the Application filing fees. Ordinarily, the application will be examined in 3 months from the date of Application, the response of examination report, advertisement of mark, opposition, if filed and hearing, if required to be scheduled will be considered early. Also, only e-filing of expedited processing of application is allowed.

Renewal

Application for Renewal of registration of a trademark may be filed within one year before the expiration of the registration of the trademark under FORM TM-R with the prescribed fee. Earlier, the Application for renewal could be filed only six months prior to the expiration of the trademark.

Applicant’s Affidavit will be required to claim the ‘use’

Earlier, it was 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. So, 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.

Electronic Service of Document

The New Rules provides for electronic service of documents including all applications, notices, statements, papers having representations or any other document, which means the Registry may send an official communication through email and it will amount to service of such document on Applicant/Opponent/ Agent provided the email has been sent to the id given.

There was an issue regarding the service of examination reports as applicants often used to claim that they never received the reports, which even resulted in trademark registry abandoning 1,67,781 marks.

The new rules even go a step further in the case of opposition proceedings where an applicant can file a counter statement if they see the notice of opposition merely uploaded on the Registry website.

These are the top 6 changes that have come about through the new Rules. If you think there are more important changes or if we left out any, please let us know in the comments section below.

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