The new Trade Mark Rules, 2017 came into force on March 6, 2017, with the several changes which in the existing trademark practice. These changes are thus expected to help the expedite approval process and also increase filings, both of which have thus shown as positive trends over the past few months. While the examination time for an application has thus been brought down from 13 months to just 1 month in January 2017, however official figures suggest that filings have thus jumped 35 percent in 2015-16 against the previous year.
In this article, we will talk about the changes that have been made in the Trade Mark Rules, 2017.
- Classification of Applicants
The Trademark Rules 2017 has thus specified the Applicants for the purpose of Trademark Application into two categories, Individuals/ Startups/ Small Enterprises and Others. ‘Startup’ and ‘Small Enterprises’ has thus been defined under the definition clause. It thus applies to both the Indian and the Foreign entities.
Startups thus means an entity, which is incorporated or is registered in India, not prior to five years and has an annual turnover not exceeding INR 25,00,00,000 in any preceding financial year and the working towards innovation, development, deployment or the commercialisation of new products, processes or the services that are driven by technology or intellectual property. However, if any entity is formed by splitting up, or reconstruction, of a business which is already in existence, it will thus not be considered as a startup and also, an entity shall thus cease to be a Startup if its turnover for the previous financial years has thus exceeded INR 25 crore or that it has completed 5 years from the date of incorporation/ registration. A Startup thus needs to obtain certification from the Inter-Ministerial Board.
Small Enterprises are the enterprises which are engaged in the manufacture or the production of goods, where the investment in the plant and machinery does not exceed the limit of INR 10,00,00,000 and in case of an enterprise which is engaged in providing or rendering of services, where the investment in the equipment is not more than the limit of INR 5,00,00,000.
- Sound Marks
Prior to the Trademark Rules 2017, the practicality of registering of the sound marks was thus quite difficult. While the applicants would file applications in order to record the sound marks by representing them graphically or either by spelling out the tune, but now the amended Rules has thus introduced the facility for the registration of a Sound mark. In the Trademark Application for a Sound mark, the Mark will thus be required to submit in the MP3 format which is not exceeding 30 seconds’ length along with a graphical representation which is of the sound notations.
- Expedited Processing of Trademark Application
Earlier, only the examination of an application could, however, be expedited. Several applicants who thus ended up paying the fee in order to expedite the process would thus have an examination report which was issued in weeks but it would have to wait for the rest of the process in order to take place which was serially based on the applications. The amended Rules thus now provide for the expedited process at each step. Request for the expedited processing of an application may thus be made for the registration of a trademark in Form TM-M mentioning the reason for the expedited examination and on the payment of the fee which is thus 5 times the Application filing fees. Ordinarily, the application will then be examined in 3 months from the date of Application, the response of the examination report, advertisement of the mark, opposition, if filed and hearing, if it is thus required to be scheduled will be considered early. Also, only an e-filing of the expedited processing of the application is however allowed.
The application for the process of Renewal of a trademark registration may thus be filed within one year before the expiration of the trademark registration which is under FORM TM-R with the prescribed fee. Earlier, the Application for the process of renewal could be filed only six months prior to the expiration of the trademark.
- Applicant’s Affidavit will be required to claim the ‘use’
Earlier, it was the Examiner’s discretion in order to call for the Affidavit claiming the use of a particular mark. However, the new Rules thus have made it mandatory for the Applicant to file an Affidavit along with the supporting evidence in order to claim the use of the mark. So, if a trademark application is thus to be filed claiming usage in India, an affidavit with the evidence of use has thus to be submitted along with the application.
- Electronic Service of Document
The New Rules thus provides for the electronic service of the documents including all the applications, notices, statements, papers which are having the representations or any other document, which thus means the Registry may send an official communication through email and it will thus amount to service of such document on an Applicant/Opponent/ Agent provided the fact that email has been sent to the id which is given.
This article has been contributed by Simmi Setia, Content Head, LegalRaasta- an online platform for Trademark search, trademark registration, patent filing, patent search etc.