INDIA: Trade Marks Rules, 2017 Implemented; Official Fees Increased

The Trade Marks Rules, 2017, have been implemented with effect from March 6, 2017, bringing in sweeping changes to the filing of documents related to trade mark registration in India. These changes include

Increase in Official Fee:

While there is an increase in almost all official fee there is a substantive increase in fee for new application and renewals

• The fee for filing an application for registration of a trade mark has been increased from INR 4000 (approximately 60 USD) to INR 9000 (approximately USD 135) when filed online, in all cases where the applicant is not an individual/startup/small enterprise, which is more than double the existing fee

• The fee for renewal of a trade mark has been increased from INR 5000 (approximately USD 75) to Rs 9000 (approximately USD 135) for online filing.

• The fee for Expedited procedure has been increased from INR 20,000 (300 USD approximately) to INR 40,000 (600 USD approximately), for all applicants that are not individuals, startups, and small enterprises.

Further, in order to encourage electronic filing over paper filing, the cost of electronic filing in all cases is 10% lesser than the fee of paper filing.

Differential Fee for Individuals / Startups / Small Entities:

One of the changes, includes, inclusion of small entities and start ups. The Application fee for individuals, Startups and small entity has been kept 50% lower to that for other applicants.

While the earlier draft rules did not include any provisions for startups, the Trade Marks Rules, 2017, include provisions for entities recognised as startups under the Startup India Initiative, or those fulfilling the criteria for being considered as such. The rules also define small enterprises in terms of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006).

Well Known Marks:

Now proprietor of trade marks can apply for declaration of its trade mark as well-known trade mark on application to the Registrar. The fees for same is INR 1,00,000 (approximately USD 1500)

Other changes:

Many elements of the 2017 rules are as expected from the 2015 draft rules which were reported in our earlier article available here

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.

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

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.

Expedited Opposition Process: The disposal of opposition matters will 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).

In cases of oppositions that have moved to the stage of evidence, the time period of two months from the service of the counter-statement on the opponent to file evidence in support of opposition, cannot now be extended (earlier, it could be extended by up to one month). Similarly, the time period of two months from the date of receipt of the copies of affidavits in support of opposition, for the applicant to file evidence in support of application, also cannot be extended. So also the evidence in reply by opponent, which also must be filed within one month, with no extension. This will help move opposition procedures at a smoother pace.

The new rules have modernised trade mark filing in India considerably, and should streamline filing and other procedure and should also reduce backlog of pending matters.

For any questions/ clarifications, please write to us at info@candcip.com.