A couple of critical draft amendments have been proposed to the Trade Mark Rules, 2002, including a 40 per cent increase in the official fees for filing a trademark application, and removing the provising to request for a trademark search from the Registry. (Image from here).
The Intellectual Property Website (IPO) has now put up the Gazette of India notification on the Draft Amendments to the Trade Mark Rules 2002, as published on 7 September 2010, a copy of which can be accessed here. Suggestions and comments are invited, which may be forwarded to the Joint Secretary, Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and Industry, Udyog Bhavan, New Delhi 110011, with 45 days from the date of advertisement.
In a related development, the IPO has also extended the time limit for inviting suggestions for any changes to the TM Rules, 2002, generally. This now stands open till 31 October 2010, and interested persons are invited to respond via email to cgoffice-mh@nic and [email protected] .The Office has also put up word and pdf formats of the Rules in order to make it easy for amendments to be suggested. The key draft amendments as advertised in the 7 September notification are:
- Doing away with the request for search of a trademark (Rule 32, and Rule 24(1) and (2) are omitted*; and the following related forms are also removed — TM-54 which deals with such a request; TM-71, i.e., request for expedited search; and TM-75, request for search for a company name)
- The official fees for applying for a trademark are to be increased to Rs 3,500 from the existing Rs 2,500 (with reference to entries 1 to 7, and 10 of the First Schedule of the existing TM Rules)
*For reference, Rule 32 deals with request for search of a company name; and Rule 24 (1) and (2) deal with requests to the Registrar for a search, and related procedures.
If these amendments go through, it will mean a couple of things — first, obviously, official fees for TM applicants will go up by a steep 40 %. While this will certainly not be received too well by applicants and attorneys in general, the second change is probably more interesting: no more TM searches by the Registry will obviously entail a huge reduction in the workload of the Registry — here, I speculate, for I don’t have numbers on how many requests for searches have been entertained. In any case, it will mean that the Registry will now likely have the time to focus on the actual process of deciding on the registrability of trademarks, which is arguably its central function.
No searches will also mean some reduction in profits for the IPO. That said, the Registry already has an online paid search facility available, which appears to be in frequent use. The online paid search is cheaper (at Rs 400) than the request for a physical search (at Rs 500). However, the search methodology of the online facility has scope for considerable improvement, by allowing more sophisticated search options, e.g., wildcard searches, boolean search options, and so on.
Relatedly, I speculate on whether the online search will eventually be available to anyone for free, which will be incredibly useful (and will probably dry up a lot of income sources!) — does anyone know of the IPO’s plans on this front? One can technically still search the database for free, but this requires keying in certain mandatory criteria (e.g., proprietor’s name, name of the mark, and class) — which defeats the concept of a true search.
Added Later — [At least two readers, Biju Nambiar and an anonymous person, inform that the online search is also intended to be made free, according to the amendments. I’m grateful for the corrections being pointed out. It also means that all of my speculation on the online search facility stands – ahem – amended. All search will be free, which works well for everyone., except the Registry, which will therefore make *no* money from searches. It may, however, make up for emptying coffers – Rs 4 crore, you say? – with the additional official fee coming from the filing.]
What i understand from the discussion with a senior official in the Registry is that the Registry proposes to do away with the paid search. This means that the trade mark search will be available for free. it is calculated that the reduction in income due to this to the Registry will be to the tune of 4 crores.
Please see the Rule 5(c ) of the draft Rules. It speaks about deleting entry no. 60 (b) under column (2) of first schedule which speaks about computer searches by general public for Rs. 400 for 15 minutes. The online search facility is provided under this clause so it is confirmed that searches are going to be completely free.
Great post. Intellectual property and trademark law is more relevant now than ever before. Keep writing, and keep us informed.
Bravo,
Margo Rose, CEO & Founder of HireFriday
http://linkedin.com/margorose
Biju and Anon – thanks for pointing out the errors in my speculation. I have added a paragraph towards the end of the existing note to reflect the correct position.
Even I spoke with a Deputy Registrar of TM… The plan was put forth before two months to make searches free.
Only the large pharma companies are paying the TMR to do the searches now. A trademark search in class 5 is the most difficult one due to various rules and judgments and so they do pay a lot of money to TM Registry. It is these large businesses that will save this fee as and When the search is made free. Government and Country would lose money..Unfortunately this loss of money will further reduce the scope for appointment of 350 examiners who are now needed at the Registry and the Patent office and the Central Government is refusing to appoint them on cost consideration and is appointing temporary examiners on a pitiable salary..This step is designed to reduce the cost for big businesses and would kill significant money inflows to the Government in future. Most Law firms would not lose. They take a search fee for their expertise in doing searches and this does not come without significant expertise. So unless this step is accompanied by significant numbers of examiners being appointed this is going to be a hidden step to boost and assist large companies and this kills Government revenues. The loss would be about Rs.7 crore Rupees per year and not Rs. 4 crores.. More than 170,000 searches are paid for by all to the TMR registry. Every business worth its salt which wants to file a trademark is capable of spending Rs.400 for a search..And they do spend that money..This is a step to assist large pharma companies only at the cost of the exchequer and at the cost of the public.
The step taken by the Registry to make the searches free is commendable especially in view of the revenue they are likely to lose. The question that is in front of Mr. Kurian is not the revenue loss. He seems to be more concerned with lack of man power in Registry and corruption. The issue here is not about the revenue loss but the credibility of the searches done by the attorneys/ applicants. The people who are in practice will agree that 20 to 25% of Registrar’s record are not updated. Several applications/ registration nos. does not have any entry in computer records if even that are valid. Several times we had to ourselves provide the Registrar to enter the data of a mark in the records while applying for renewal or certified copy. This is a common experience with the attorneys in Trademark Practice. With such an incomplete database how can one be sure that the mark adopted by him/her is not registered or applied for before. With official searches during opposition proceedings/ infringement proceedings you at least had a way out to show that the mark was adopted by him/her honestly as the same was not revealed in official search. It is high time for the Indian executives and Mr. Kurian and his colleagues to understand Indian e-register is not reliable as is the case in U.S. or other developed in countries. Every 2-3 out of 10 entries in our e-register will be wrong. Several examples are available were even marks are entered wrongly in e-register. In such a scenario the remove the official search provisions will not go good.
thanks for your comments, Anon and Anon (pun is entirely intended!).
While I agree that TMs in class 5 (pharma) are the most voluminous and most challenging to search for, I am not sure I understand the conclusion drawn by Anon an 2:03, i.e., “This is a step to assist large pharma companies only at the cost of the exchequer and at the cost of the public.”. However, I love the impassioned cry for improving the TM search system you call for, and I second you there. Costs may be recovered, as the amendment suggests, by the increased costs for filing a TM application. But the quality of searches at the Registry remain abysmally poor.
Which is where I agree entirely with Anon at 6:52 pm. I had raised a preliminary concern in my posts/s about search options not being sufficiently refined. You can’t, for example, reverse search for a pure image file at the database, which a website like tin-eye allows you to do easily.
That said, a search is hardly of any value if the database itself is incomplete or incorrect. This is a fundamental concern, and entirely reliant on margins of human error at various data entry points.
And here I speculate — margins of error may reduce when more people start using the online filing facility. In the event that all filing goes electronic, the onus of ensuring accuracy in the data entered no longer rests on the Registry, but on the applicant/attorney. People may bemoan having to enter details themselves, but given the volumes of filings, increasing by the year, this may actually be a good thing — for it will leave the Registry to perform its true role with greater focus, i.e., that of assessing and determining the registrability of a mark.