Proposed Amendments to Trademark Laws

The Department of Industrial Policy & Promotion (DIPP) has proposed amendments to the Trade Mark Rules of 2002. The draft that was proposed late in 2015 is said to be coming into force any time now after having received comments for modifications by the Central Government. Some of the prominent changes that were proposed are:

1. Hike in Filing Fee

A 100% hike for the filing of a trademark application has been proposed. A 10% addition has been added to the physical filing of the application with the trademark registry. This has been done as to as promote the concept of e-filing. The fees are as follows:

S.No Fee Payable For Current Fee(INR) Fee After Amendment (INR)
      E-Filing Physical Filing
 1. Application for registering a Trademark in one class 4000 8000 8800
 2. On Counter-Statement in answer to a notice of oppposition 1000 2000 2200
 3. For renewal of registration of trademark in one class 5000 10000 11000
 4. For renewal of registration of trademark when the trademark is not renewed within time 3000 6000 6600
 5. For restoration of trademark within 1 year from the expiry date 5000 10000 11000
 6. Application for assignment of trademark within 6 months of assignment 5000 10000 11000
 7. Application for assignment of trademark within one year of assignment 7500 15000 16500
 8. Application for assignment of trademark after one year of assignment 10000 20000 22000
 9. Application requesting expedited examination of the application 20000 40000 44000
 10. Application requesting inclusion of a mark in the list of well-known trademark   100000 110000

2. Sound Marks:

Rule 27(5) of the draft states that sound marks can be submitted as long as they are submitted in an MP3 format with a graphical notation. The sound file must also be limited to thirty seconds. This clears the ambiguity in the earlier rules wherein there existed no amenity to submit sound files.

3. Well-known Trademarks:

Discretionary powers have been given to the registrar under Rule 127, to include a mark in the list of well-known trademarks after carefully reviewing the application. Further, the registrar can also remove the mark from the list if proven necessary and in error. Thus the powers of the registrar have been broadened. The fee for filing is INR 1,00,000.

4. Expedited Examination:

Before the amendment, the expedited process would end after examination of the application and the response filed to it. However, now, other steps forming part of the process like that of – scheduling of show cause hearing, publication of application and disposal of opposition if any are brought under the ambit of expedited examination, until the final disposal.

5. Statement of Use:

If at the time of filing an application, prior use of trademark is claimed, then an affidavit along with supporting documents and evidence needs to be filed as proof of the same.

6. Reduction in forms:

The total number of forms required has been reduced to 8 in total making the process simpler.

7. Free Search:

Applicants/general public can now do Trademark searches for free instead of the earlier provision of making a request to the Registrar for seeking registered marks that could possibly be similar to or resembling the mark that is sought to be registered. This is an extremely crucial aspect since it helps applicants avoid potential conflicts/litigation in the future. The introduction of free search helps eliminate the burden on the Trademark Registry.

8. International Applications:

Applications can be sent to the International Bureau for international registration at a fee of INR 4,000 under the Madrid Protocol as per Rule 66.

9. NICE Classification:

The Nice Agreement (1957) has established The Nice classification that is an international classification of goods and services with reference to the registration of marks. The latest edition of the same will now be followed. Further, the Registrar will be publishing an index enlisting the goods and services of Indian Origin.

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