The Department of Industrial Policy and Promotion working under the aegis of Ministry of Commerce and Industry have issued a notification, under the ambit of section 157 (4) of the Trade Marks Act, 1999, in the month of March 2017 bringing new Trademark Rules in suppression of and to replace the existing Trade Marks Rules, 2002.
The Application for Registration can be made through two modes namely Individual and Body Corporate. Two new types of Body Corporate have been additionally identified and defined under the new Rules which are;
Small Enterprise: 2(v): Any enterprise engaged in the manufacture or production of goods or for rendering services and the investment for plant and machinery in such enterprise should not exceed the limit specified for this purpose in the MSME Development Act 2006.
Start-ups: 2(x): An entity in India recognised as a start up by the Competent Authority.
An Application for Registration of a trademark consisting of a ‘Sound Note’ as a trademark, the same has to be reproduced in ‘mp3’ format not exceeding thirty seconds accompanied with a graphical representation of its notations.
The new Rules also provides for the way and manner in which a Trade Mark can be declared as ‘Well-Known Trade Mark’. Any person on an application in the prescribed form and by payment of fees can request Registrar for determination of a Trade Mark as Well Known have to be accompanied by a statement of case containing the documents and evidence relied upon by the Applicant in support of his case. In determination of a Trade Mark to be Well Known the Registrar can also invite objections from the general public to be filed within 30 days from the publication. In case of a Trademark determined as Well Known the same shall be published in journals and the name of the trademark shall be entered in the list of trademarks maintained by the Registrar. Removal of Well-Known trademark shall also take place, if it appeals to the Registrar that such Trademark has been erroneously or inadvertently included or is no longer justified to be in such list. Before removing such Trademark from the list due opportunity of hearing will also be provided to the proprietor of such Trade Mark.
The Schedule 1 to new Rules describes Fees to be paid along with the Forms. Under the new scheme of Rules, the Fees have been increased. Even the series of the Forms and their names have been changed. From approximately 80 Forms in the earlier Rules the news provides only for 12 kind of forms described in Schedule 2 of the Rules. Comprehensive list of forms with all details is also provided. Schedule 3 provides list of forms to be used by the Registrar. Schedule 4 has not witnessed much amendment apart from the increase in the Fees.
The provisions for service of documents through electronic mode have also been incorporated. Rule 14 now provides that communications and documents in relation to Application or Opposition, notices or other documents may be served by the Registrar by sending them by post to the party or by email communication. The delivery shall be deemed as the same would be delivered in the ordinary course of post or the time of sending email. In cases of online filing the expression signing includes digital signature as well.
Keeping in view the digitalization of records and using of digital means the Trade Mark Rules have also incorporated a new provision with regard to Oppositions which provide that, where the Applicant has filed his statement on the basis of copy of notice of opposition made available through official website the requirements of service of copy of the notice of opposition to the Applicant shall be dispensed with. Also herein, realizing the advancement in technology for the purpose of court proceedings provisions are provided for the provision for video conferencing or through any other audio visual communication devices for hearings
The new Rules have also provided for comprehensive provisions for Examination, Objection to Acceptance, Hearing and Expedited processing of Application. New time bound mechanism to furnish reply of the Examination Report i.e. one month from the date of receiving the reply has also been provided. No provision has been provided to extend the time limit or any power of Registrar for extending the period of one month for furnishing reply to the Examination Report.
A formalized procedure has been drawn in the new Rules for registering 3D Trade Mark and a Trade Mark claiming combination of colours. Any Trade Mark shall be considered as Three-Dimensional Trade Mark only if the Application contains a statement to that effect. Similar principle applies for Trade Mark if the same consist combination of colours. To claim combination of colours as distinctive feature of the Trade Mark the Application for Registration of Trade Marks should contain a statement to that effect. Similarly a three dimensional trademark for registration should also be accompanied with two dimensional graphics or photographic representations
The Rules for signing of documents has been amended to an extent that any document required to be signed under the new provisions shall be signed by the applicant or opponent or any person duly authorized for the purpose.
Rule 19 and 20 from old Rules have been repealed and a new consolidated provision as rule 18 have been incorporated in the new Rules. The earlier Rule 81 which provides for particulars to be stated in the agreement or assignment for transmission has not been incorporated under the new set of rules.
The provisions for Agency under the new rules have also been changed. In cases of withdrawal by the agent the applicant or opponent must ensure that the fresh address for service must be provided within 2 months of withdrawal of an agent / authorization.. In case of failure to do so, such Application or Opposition shall be deemed to be abandoned. In case of the revocation of authorisation by the applicant or opponent limitation of two months shall apply as well.
An application for the registration of trademark for goods or services should be able to explain with sufficient precision or by description of words and must be able to depict the graphical presentation of the trademark
The time limit for renewal of the registration has been increased from six months to 1 year before the expiry of the registration of the Trademark. Even the earlier provision to extend time for filing evidence in support of opposition has been removed under the new set of rules.
Authored by Mr. Rahul Dubey, Associate, Infini Juridique. If you have any query then do send a mail to Rahul