I write to bring to your notice the coming into force of the Trade Mark rules, 2017.
It overrules Trade Mark rules, 2002.
Let us look at a few of the salient features.
- Number of Forms have been brought down from 74 to 8
One can clearly understand the manner in which this has been carried about by comparing Schedule 2 of the 2002 rules and the 2017 rules. The 2017 rules opted for formats that could be used for multiple types of applications, as opposed to the 2002 rules, which had tailor made formats for each type of application.
- Official Fees For Trade Mark Registration
A quick comparison of Schedule 1 of the 2002 and 2017 rules will show one that the fee for each type of application has increased significantly. Sometimes, even by 400%.
But as we shall see, considerable concessions have also been provided.
- Concessions to Start Ups, Individuals and Small Enterprises
Firstly, note that the definitions for “Start Ups” and “Small Enterprises” can be found under Rule 2 (x) and (v) respectively. These terms did not exist in the 2002 rules.
Entities that fall under the above categories have been provided concessions.
This can be seen by perusing Schedule 1 of the 2017 rules.
- Promotion of E-Filing
The 2017 rules incentivizes E-Filing by providing for lower application fees.
This also can be seen by perusing Schedule 1 of the 2017 rules.
For every kind of application, the column indicating the fee for E-Filing shows a 10% reduction from the fee indicated under the “Physical filing” head.
- Process for Determination of “Well Known Mark” Established
Given that we don’t have to compare any provisions, I am not reproducing anything here.
All relevant information can be found in rule 124 (2017).
Application fee for such assessment has been mentioned in Entry 18 of Schedule 1 (2017): INR 1,00,000.
Until now, a mark could only be declared as a “Well Known Mark” through a trade mark infringement dispute in court. But now, trade mark owners can make an application to the registrar for the status. From the media reports that I have gone through, a sense of euphoria over the new rules is quite palpable. One such sample can be found here
But Prof. Basheer sounded a note of caution. He was quoted as follows in the livemint:
“We have to be really cautious about what trademarks we declare as ‘well known’ ones, given that it confers huge legal power on these marks. Owners of such marks can stop even those goods and services that are far removed from their ordinary line of business. Courts have been quite circumspect about declaring marks to be well known and have done it through a hard fought adversarial process. One hopes that the government would be equally cautious.”
Elsewhere, he considered the possibility of dilution of standards:
“Unfortunately, given the perverse financial incentives (Rs 1 lakh fee) and the ability of some TM owners to exert pressure on the registry, there is some likelihood that the standards may be diluted!”
Apart from the deleterious effects of being too lenient with declaring “Well Known Marks“, Prof. Basheer also, elsewhere, questioned the constitutional validity of the new rule. The question arises because, up until now, it was the judiciary that decided upon the mark’s status of “Well Known Mark“.
“I’m not sure that the text of the trademarks act confers power on the government to declare “well known” trademarks on its own. And in this sort of manner. It’s likely that someone will soon challenge the constitutional validity of these rules. “
- Representation of Sound marks
Note that there is no mention of sound marks in the 2002 rules.
Relevant part of rule 26 (2017) reads as follows:
“(5) Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.”
- Filing of Opposition to Registered Marks and International Registrations
Definition of “Opposition” has undergone a change.
In the 2002 set, Rule 2 (o) defined “opposition” as
“(o) “opposition” includes an opposition to the registration of a trade mark or a collective mark or a certification trade mark, as the case may be;“
while in the 2017 set, “opposition” is defined as:
“(o) “opposition” means an opposition to the registration of a trademark or a collective trademark or a certification trademark, as the case may be and includes an opposition to grant of protection to an international registration designating India and opposition to alteration of registered trademark;”
Note how “opposition” encompasses a larger area now.
- Allowance of Video Conferencing for Hearings
The provision dealing with hearings (Rule 111) in the 2002 set, does not refer to any elements of video conferencing, while the relevant part of Rule 115 (2017) reads as follows:
“Provide that the hearing may also be held through video-conferencing or through any other audio-visual communication devices and in such cases the hearing shall be deemed to have taken place at the appropriate office.”
- Recognition of Email as a Mode of Service
Rule 15 of the 2002 set reads as follows:
“15.—(1) All applications, notices, statements, papers having representations affixed thereto, or other documents authorised or required by the Act or the rules to be made, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar or any other person may be sent through the post by a prepaid letter.
(6) The Registrar may after informing the public in the Trade Marks Journal accept communications of a routine nature through E-Mail not requiring the payment of a fee thereof.”
Rule 14 of the 2017 set reads as follows:
“(1)All applications, …. may be delivered by hand or sent through the post by a prepaid letter or may be delivered by hand or sent through the post by a prepaid letter or may be submitted electronically in the manner as laid down by the Registrar.
(5) The Registrar after informing the public in the Journal may accept applications…, or other documents online through the gateway provided for this purpose, or in case of documents not requiring the payment of a fee, through e-mail to a designated email address for the purpose.”
Note that though Rule 15 (2002) refers to E-mail as well, a close reading of the two sets seems to suggest that the newer statute allows for the sending in of a lot more documents through the medium.
Rule 18 (2017) also talks about E-mails. (Service of Documents by the Registrar)
- Regarding Adjournments
Though the provision associated with “Hearing and Decision” (rule 50(2017)), is pretty much a remodelled version of rule 56 (2002), there has been one significant addition:
“Provided that no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days.”
- Filing of Statement of User, now, Mandatory
Rule 27 (2002) reads as follows:
“27. An application to register a trade mark shall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods or services mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.”
While rule 25 (2017) reads as follows:
“(1) An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application.
(2)In case, the use of the trade mark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.”
While the 2002 rules left it to the discretion of the Registrar, the 2017 rules make it mandatory for the applicant to file an affidavit testifying use.
- No Extension of Time for Filing Evidence in Opposition Proceedings
Relevant portion of rule 45 (2017) reads as follows:
(2) If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.”
But, rule 50 (2002), the corresponding provision, had an extra sub-rule (3):
(3) An application for the extension of the period of one month mentioned in sub-rule (1) shall be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein.”
It is the exclusion of this sub-rule (3) in the 2017 rules that helps us arrive at the conclusion that applications for extensions for filing evidence in support of opposition is no longer acceptable.
While the above analysis was in the context of “Evidence in Support of Opposition”, the same reasoning holds for “Evidence in Support of Application”(rule 46(2017)). The corresponding provisions have the same structure.
Introduction of Provisions for TM Registration under Madrid Protocol Chapter IV (2017) deals solely with the protection of marks through the Madrid Protocol. Since I am only providing an overview, it wouldn’t be wise to go into the details here.
(Edit: The Madrid Protocol was included in the amendment of 2013)
For Press Information Bureau’s release on the same issue, refer here.
Image from here.