The Department of Industrial Policy and Promotion (DIPP) has released the a draft of the proposed new Trademark Rules. The new rules provide for applications for sound marks, eliminates the provision for search by the Registrar for any prior, registered mark that resembles the mark for which trademark registration is sought and has provisions relating to international applications for marks originating in India. The rules do seem to create any new procedure or mechanisms to either tackle the immense backlog for present applications or the unpredictability in terms of processing time for the actual examination/opposition. However, they do stipulate a hefty doubling of all fees. If services are not going to be more efficient, applicants can rightfully ask: What are we paying double for?
Free search
The earlier rules contained a provision by which applicants could make a request for search to the Registrar to test whether the mark they seek to register ‘resembles’ any registered mark. This enables potential applicants to identify possible conflicts and assess whether their mark could attract litigation or whether another mark has wrongfully used or registered a mark that is similar to their original/older mark. This facility saves an applicant huge potential losses in application/litigation fees. In a commendable move, the Trademark office then amended the Rules in 2010 to make trademark searches available to the public for free. The draft rules, therefore, do not contain any provision relating to a request for search. The elimination of this function arguably frees the Trademark office’s hands so that they can focus on examination and disposal of the pending applications.
The draft rules continue to provide for the issuing of a section 45(1) certificate u/s 45(1) of the Copyright Act, 1957 to the effect that no trade mark identical with or deceptively similar to such artistic work as sought to be registered has been registered as a copyright.
Comparison of Present and Draft Rules on Search:
| PRESENT RULES | Fee | DRAFT RULES | Fee | |||
| Request for preliminary advice on distinctiveness
|
Rule 23 | Ordinarily given within 7 working days of the date of filing of the application. | Rule 22 | No time limit | 2000 (e-filing)
2200 (for physical filing) |
|
| Request for search | Rule 24 | Request for a search to ascertain whether the submitted mark resembles any trademark on record. No time limit for issuing. | 500 | None | ||
| Request for expedited search | Rule 24(1) proviso | Expedited search report to be issued ordinarily within 7 working days on payment of 5 times the ordinary fee. | 2500 | None | ||
| Request for certificate u/s 45(1) of the Copyright Act,
1947 |
Rule 24(3) | Request for issue of a certificate u/s 45(1) of the Copyright Act, 1957 to the effect that no trade mark identical with or deceptively similar to such artistic work as sought to be registered has been registered or in respect of which a pending re-registration application subsists for re-registration as a copyright under the Copyright Act, 1957.
The certificate shall ordinarily be issued within 30 working days of the date of request |
5000 | Rule 23 | Request for issue of a certificate u/s 45(1) of the Copyright Act, 1957 to the effect that no trade mark identical with or deceptively similar to such artistic work as sought to be registered has been registered or in respect of which a pending re-registration application subsists for re-registration as a copyright under the Copyright Act, 1957.
The certificate shall ordinarily be issued within 30 working days of the date of request. |
10,000 (e-filing)
11,000 (for physical filing) |
| Request for expedited search certificate u/s 45(1) of the Copyright Act, 1947 | Rule 24(5) | Certificate to be ordinarily issued within 7 days of application on payment of 5 times the fee. | 25,000 | Rule 23(3) | Certificate to be ordinarily issued within 7 days of application on payment of 5 times the fee. | 1,25,000 |
The provision for expedited examination of applications (‘ordinarily’ with a within 3 month limit guarantee) on the payment of 5 times the fee continues. The unpredictable and lengthy examination period means that most applicants have to apply for expedited processing (and even then it is unlikely for them to get their applications processed in a timely manner). With the doubled fee, this now costs a hefty Rs 20,000 for e-filing and Rs 44,000 for physical filing.
Sound marks
The protection of sound marks is a relatively recent development in trademark law. India’s first sound mark, the Yahoo! yodel was granted as recently as 2008. Rule 27(5) of the draft rules clarify that sound marks are to be submitted in MP3 format and with a graphical notation. Note, it clearly states graphical notation and not description and therefore, it is unlikely that sound marks which are incapable of graphical notation, such as the MGM lion roar, would be granted in India.
Register of ‘well-known’ marks
Rule 127 gives the Registrar the discretion to determine whether a certain mark is ‘well known’ after an application for such determination is made in Form TM-M. The Registrar is to maintain a list of well known trademarks based on these decisions. The fee for the same seems to have been missed out Schedule I. The fee for review of this determination is fixed at Rs 4000 (for e-filing) and Rs 4400 (for physical filing) and hence it should be around the same for the initial application. The Rules do not stipulate the basis for this decision by the Registrar. It must be remembered that a ‘well known’ mark can receive trademark registration despite failing to fulfil the criteria in Section 9(1), namely, (1) distinctiveness, (2) must not designate quality/nature/source, etc. and (3) cannot be customary in current language. Therefore, this is a crucial determination and it is doubtful whether leaving the Registrar to stipulate her own criteria for ‘well known’ would stand the test of excessive delegation.
International Applications
Rule 66 of the draft rules provides for applications to be forwarded to the International Bureau (IB) for international registration under the Madrid Protocol at fee of Rs 4000. Rule 69 describes the procedure pursuant to the IB designating India as a protected country pursuant to an international application made in another country.
Conclusion
The new rules do not seem to dramatically change the present procedure for trademark filing. The most urgent need from these draft rules is stricter timelines for processing of applications. The substantive hike in fees can only be justified if it goes towards creating well staffed and efficient trademark offices across the country. A shout out to our readers for feedback on what this hike will mean for businesses? And what are other issues with trademark filing that needs addressing?
Since I run a firm, costing is of prime importance to my clients. The Official charges to file most Forms has doubled; its cheaper to e-file vis-a-vis Physical filing. E-filings are fraught with so many problems that of receiving your Fee Receipt after 48 hours, if there is a mistake, you have to wait for at least 3-4 days before the IT department takes cognizance of a mistake. Filing an Application is going to be Rs. 8000/-. Is this new Schedule solely for MNC’s and large companies. I would have thought that the idea is to encourage even an individual Indian to seek to protect his/ her mark. What happened to “Make in India” slogan ? Or is that mere lip service of the servile.
A most hilarious addition to the First Schedule is the Form TM–M which relates to a Request to include a mark in the List of well known trade marks- only for Rs. 1,00,000/- (e-filing) while it is Rs. 1,10,000/- (for physical filing). Any Johny- come-lately on the Global scene can aspire to possess a “Well Known ” mark merely for a “sum”.
In this Proposed Amendment Rules 2015, one of the obnoxious changes in the draft rules which will have the biggest impact on the business entities is almost all the fees have been increased by 100%. From filing to renewing, the entire Trademark registration procedure will cost an applicant twice as much as it does now. The proposed hike in fees will prove to be more unpleasant to business entities, especially start-ups.
Today as India is heading towards “Start-up India”, “Make in India Slogan.
Increasing Trademark fee will surely not affect the big corporate offices, but will definitely affect” Start-up India Initiative,“ “Make in India Initiative” Small Corporate entities.
Keeping in view, of Start-Up, Small Corporate entities ,fee should not be increased,doing so will surely affect the awareness of IP Laws in India,
The changes which has been suggested in the new draft are fee hikes that will effectively double most of the administrative costs of trademark prosecution and renewals in the country. Surely this will impact on filing by small traders and start-ups.
Whereas the other amendments which has been introduced in the draft will surely help in making the system simpler and more efficient; the expedited steps are being promised at various stages of the procedure as several forms and processes has been consolidated.
The new rule is going to have a huge impact on small startups and SME sector who want to secure their trademark. Rs. 8000 of Govt. Fees plus professional charges will surely curb the startups from trademark filing which may lead to bigger players taking advantage of the situation. Govt. shall review the fees part in a SERIOUS sense. Along with EASE OF DOING BUSINESS – COST OF DOING BUSINESS is also very important.
New Private limited company Govt. Fees is around Rs. 6000 in India and a single trademark application costing Rs. 8000 does not make any business sense. Some serious voice to be raised by professionals and Institutions against this arbitrary move.