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  • Sonal Madan

Proposed Amendments to Trade Mark Rules (India) – A stich in time may save nine!

The Ministry of Commerce and Industry (India) (MCI) has recently issued the draft Trade Mark (Amendment) Rules. The MCI has invited comments from the IP fraternity and general public before finalizing the said amendments. Some of the key highlights of the proposed amendments are listed below.

1. Fee: There is a proposal to increase the official fee for filing applications, renewal of registrations, handling fee for applications filed under Madrid Protocol designation India etc. by 100%.

2. E-Filing: In order to encourage the practitioners to file the applications electronically, the MCI has proposed a 10% discount on the official filing fee for applications filed online.

3. Well Known Marks: The brand owners will now have an option of approaching the Trade Marks Registry to have their marks declared as “well-known” upon payment of applicable fee. The Registrar will have the discretion to decide whether a mark is well known or not.

4. Statement of Use: All trade mark applications (except those filed on an “intent to use” basis) will be required to contain a statement of use in respect of all the goods and services mentioned in the application. The Application will have to be accompanied by an Affidavit testifying to use of the mark along with supporting documents.

5. Expedited Opposition Process: The disposal of opposition matters may become quicker as the Applicant(s) will now have an option of filing a Counter Statement to the Notice of Opposition as soon as the same is uploaded on the Trade Marks Registry’s website. They need not necessarily wait for the Official service of the Notice of Opposition. Further both parties to the Opposition will now be required to serve a copy of exhibits to the other side at the time of submitting the same with the Registry unlike the current practice, where exhibits are served only upon a written request by the Opponent/ Applicant (as the case may be).

6. Forms: With a view to simplify the trade mark registration process, the number of official Forms have been consolidated to 8 Forms.

7. Sound Marks: The Applicants will now be required to submit sound recordings in MP3 format not exceeding 30 seconds besides the graphical representation for registration of sound marks.

While the Rules may be finalized and implemented anytime soon, it is a good time for brand owners to protect their trade marks in India. Also, considering that the renewal fee is likely to be doubled once the amendment is implemented, it would make perfect sense to immediately pay the renewal fee for any upcoming renewals. For any queries in respect of the proposed amendments, please feel free to reach us.

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