Trade Marks Rules Amended 2014

On August 1, 2014, the government amended certain provisions of the Trade Marks Rules 2002 (here). The rules will come into force on publication in the Official Gazette [*see below]. Through the amendments, the official fees for trademark application under entries 1,3,4,5,6 and 7of the First Schedule of the TM Rules 2002 have increased from Rs. 3,500 to Rs. 4,000. The fees for expedited examination of an application for registration of a trademark has increased from Rs. 12,500*[see below] to Rs. 20,000 , a 60% increase.

[*Added later: Though the official notice bringing about these amendments states that there has been an increase from Rs. 12,500 to Rs. 20,000, a public notice issued by the Trademark office on August 7, 2014, (here) states that there has been an increase of Rs. 2500 only (i.e from Rs. 17,500 to Rs.20,000).  This confusion arises because the 2010 amendments only amended the application fees from Rs.2500 to Rs.3500. However, the amendments were silent on the fees for expedited examination (see here and here). But Rule 38(1) clearly states that fees for expedited examination is five times more than the application fees i.e. after the amendment the fees for expedited examination should have also been amended from Rs.12,500 to Rs.17,500. Since this was not stated in the public notice as well as gazette notification of 2010, the current amendments rely on the old entry i.e. 12,500.

Also, the public notice states that these revised rates are effective from August 1, 2014. These amendments were published in the Gazette on August 1, 2014 (here). Applicants who have filed applications/expedited examination requests are supposed to pay the difference (Rs. 500 or Rs. 2500 respectively) on or before September 30, 2014.

Thank you to Mr. Bhandare and Mr. Singh for bringing this to my notice.]

Also, there seems to be a conflict between the government notification and the public notice with regard to the date from which these amendments are effective. The notification says that these amendments will come into force on publication in the official gazette. However, the public notice makes them effective from the date of notification i.e. August 1, 2014

Rule 38 of the Trade Marks Rules 2002 deals with expedited examination. An applicant, after receiving an application number from the Registrar (an acknowledgment of receipt of application) can file Form TM 63 along with a fee and a reasoned request for an expedited examination of his application. If the Registrar declines the request, the fee is refunded.

These fees were probably increased in order to reduce the number of applications for expedited examination. This may in turn reduce the work load of the registry and enable it to focus on examining and processing other applications.

These amendments were passed pursuant to draft rules that were published in August 2013 for comments from persons likely to be affected. The notification states that no objections were received from the public. The Trademark Rules enacted in 2002 have since been amended in 2010 and 2013. Recently the Patent Rules were also amended and we have reported it here.

Hat Tip to Mr. Shiwprasad Wanve and Mr. Shailendra Bhandare for bringing this development to our notice.