In March 2017, The Ministry of Commerce and Industry in India brought into force the much awaited Trade Marks Rules, 2017 overhauling the 2002 rules. While the primary purpose of the modification was to simplify the trademark registration process, it has introduced drastic changes in the trademark filing and… (Featured image is for representational purpose and has been sourced from http://creative-commons-images.com/handwriting/t/trademark.html)
In March 2017, The Ministry of Commerce and Industry in India brought into force the much awaited Trade Marks Rules, 2017 overhauling the 2002 rules. While the primary purpose of the modification was to simplify the trademark registration process, it has introduced drastic changes in the trademark filing and opposition procedures of India.
The new provisions will benefit entities across the globe that use trademarks and confer protection despite the dearth of trademark registration in India. Trade Marks Rules, 2017 is welcomed by multi-national companies who find it difficult to prove any trans-border reputation of their trademarks in India.
The Trade Marks Rules, 2002 were complex and unable to keep pace with the current IP scenario in India, wherein the number of trademark applications being filed every year increased manifold. There was a dire need to simplify the trademark filing procedure and introduce a new set of procedures to dispose off applications/oppositions rapidly.
A few major features introduced by these changes include:
- Reduction in number of forms
The Trade Marks Rules, 2002 required the filing of 74 forms, each having a format of its own. This made the exercise cumbersome. However, the new rules use a format which is applicable on more than one type of applications, reducing the total number of forms to 8.
- Amended Trademark Registration Fees
There has been an increase in the Registry fees for many procedures. For e.g., the filing fee for trademark applications has increased from INR 4,000 to INR 10,000. However, the government has conceded a few concessions for select procedures.
- Concessions to Start Ups, Individuals and Small Enterprises
The Registry has introduced concessional charges for filing a trademark application for startups, individuals and small enterprises. Now, they can file trademark applications for INR 5,000 instead of INR 10,000 when the applications are filed by hand and INR 4, 000 when the applications are electronically filed.
- Promotion of E-Filing
In order to promote paperless functioning, the Registry has reduced the charges for electronic filing of documents by 10%. For e.g., the charges for filing a trademark application physically is INR 10,000. Whereas online filing costs INR 9,000.
- Expediting registration procedure
Earlier the trademark application could be expedited by paying an additional fee of INR 20,000. This ensured only an expedited examination of the application, not the procedure for trademark registration (publication of application, issuance of certificate etc.). However, the new rule ensures that not only the examination but the entire post-examination procedure is prioritized. In case the application is opposed, the service of Notice of Opposition, Counter Statement etc. will also be expedited.
- Provision for declaration of a mark as ‘Well Known’
Previously, a trademark could be declared as well-known only by a judgment delivered or order passed by a court during infringement proceedings. The Registry did not have any power to declare a mark as well known. Albeit, now a trademark proprietor can file an application at the Trade Marks Registry to declare a trademark as well known. The official fee for filing such applications is INR 100,000.
However, the IP fraternity is also strictly scrutinizing this newly introduced rule. Many people fear that this rule may be unconstitutional since it vests more power to the Trade Marks Registry.
- Video Conferencing for Hearings
The new rules now allow counsels to attend hearings via video conferencing. This has a two-pronged advantage: It reduces cost factor for lawyers (and eventually for their clients), and it also prevents unnecessary adjournments due to unavailability of a lawyer at the Registry.
Besides, the number of adjournments are limited to two. In case the concerned party is unable to attend the third hearing as well, it will result in the application, opposition etc. to be deemed as abandoned.
- Filing of Statement of User now mandatory
Under the new rules, it is mandatory for an application to be filed with an affidavit of use in case the applicant is claiming use of its mark. This is expected to prevent applicants from filing trademark applications with a false use claim.
- No Extension of Time for Filing Evidence in Opposition Proceedings
The concept of filing extensions in opposition proceedings has been a point of debate for a long time. The earlier set of rules provided for filing an extension of time for filing the evidence in support of opposition. However, as a matter of practice, parties to an opposition/rectification proceeding started filing innumerable number of extensions for filing evidence, leading to unnecessary delays. Later, in the matter of Sunrider Corporation vs Hindustan Lever Limited And ANR. [MIPR 2007 (3) 46], the High Court of Delhi adjudged that the Registrar does have the power to grant more number of extensions apart from the one already mentioned in the rules of 2002.
Now, the new set of rules have done away with the procedure of filing extensions altogether, and the parties to an opposition proceeding are required to file preliminary evidence within a time frame of two months and rebuttal evidence within a period of one month.
It is noted that the earlier set of rules were biased towards the applicant. Non-filing of evidence by the opponent resulted in abandonment of the opposition, whereas non-filing of evidence by the applicant resulted in the matter being posted for hearing. This gave the applicant another chance to defend its case at the hearing stage. The new rules state that in case the applicant does not file its evidence within two months the application would stand abandoned. This will ensure that applicants are more vigilant at the evidence stage of the proceedings.
It is not amiss to say that the Indian Trademarks filing system is slow and inconvenient. The Trade Marks Registry is reeling under backlog and there are thousands of applications currently pending at the Registry. As the number of applications filed at the Registry per year are continuously increasing, the time gap between the application and registration of a trademark is on a steep rise. Below is a five year trend pertaining to the marks filed vs. trademarks registered at the Registry:
To overcome the backlog, the Registry organizes special drives; however, these drives only provide a short term relief to the Registry and the applicants. Also, many of the attempts made by the Registry to clear the backlog have resulted in a counter blast. The Trade Marks Registry in the past year received criticism from the Indian as well as the international IP community when approximately 190,000 applications were abandoned by the Registry officials without giving the applicants a prior notice.
Needless to say, with the current infrastructure and backlog, it will be rather difficult to implement the new rules with immediate effect. The Registry is relatively new to many of the concepts (video conferencing etc.) that are introduced in the rules. However, these rules are a much awaited initiative towards a bigger objective. They are evidence that the Government is striving hard to make a strong standpoint in the field of IP and that effort is being made to streamline the work flow at the Trade Mark Registries. The IP fraternity may face several obstacles in implementing these rules; however, they will surely set the ball rolling in the right direction.