Trademark rules were amended in March 2017. Here, we are going to discuss the amendments which are really important to know.
Reduction in Number of forms:
In the trademark rules 2017, there are plethora of things got changed. The most significant and useful change is the number of forms which were in use got reduced drastically. Instead of 78 forms, now it is replaced into 8 and moreover the single form can be used for multiple purposes.
Initially there was a form prescribed in trademark application in India in the name “TM-1” and another form had been in use for filing multiple classes. Now, a single form has been introduced for number of purposes.
The application “TM-A” can be used for multiple purposes such as convention application, trademark application, multiclass, multiclass convention application, series mark in a class or multiclass, series mark from convention country in class or multiclass and collective mark etc.
Division in the category of an applicant:
In earlier, if the trademark application was filed, the applicant needs to specify the required details. But based on the applicant’s legal status, there was no implication over the fees.
Now, the applicants are also categorised based on the legal status.
For start-ups, Small and Medium Enterprises (SMEs) and for individual the e-filing has been increased to Rs.4500 per class and for entities like LLP (Limited Liability Partnerships), Private Limited Company (PLC), and any other form of body corporates the fee has been increased to 9000 per class.
The start-ups and SME’s only can claim the benefit of fee concession if they obtained the start-up certification from the inter-ministerial board or the certificate of SME from the ministry of SME. But, generally the start-ups do not have this certification. After this rule it is indeed to obtain the certification from the respective places.
Serving of documents:
Earlier the applicant was allowed to file for the reply of examination report or file for counter statement once he received any physical copy of the notices. Now, after the amendment the notice of opposition or the examination report can be uploaded in IP India portal and it is available online. The applicant need not wait for the serving of document in order to proceed with filing the reply.
This obviously reduced the processing time of the examination and opposition proceedings, but mainly it has curtailed the freedom of the applicant to claim against the plea that he/she was not constructively aware of such notice. The examiner would grant him leave in order to file for the replies or trademark objection reply at the later stages. We believe that this plea will not hold good and strict deadlines will be followed.
Claim of usage:
In the trademark application TM-1 which was used earlier, the applicant was allowed to claim the usage even before the date of filing of application and it was the right of the examiner to call for affidavit of usage. Now, it has been amended that if in case the applicant is willing to claim the usage before the date of filing of trademark application, it is mandatory to attach the affidavit of usage in order to substantiate their claim on user details which is to be filed in new form “TM-A”.
It is advisable to file a trademark application as soon as you intend to use it. The preparation of a affidavit requires lot of evidences and statement of facts making it a difficult and a time consuming process.
Change in renewal filing:
In earlier, the applicant was given time to renew the trademark application six months before the expiry date but now the time duration got extended and have given 1 year of time for the renewal of application.
Reduction in number of adjournments:
There was no bar on the adjournments but now the parties need to request for the adjournment along with the fees which has been prescribed and to be notified further that no party shall be given more than 2 adjournments. Every adjournment should not be more than 30 days. This will quicken the process of trademark proceedings.
Recognition as a well-known trademark:
As per the earlier trademark legislation, whether the trademark is well-known or not, was decided by the court. But now if anyone wants to recognise their brand as well-known under the rule 124, need to make the payment of Rs.1 Lakh. Along with that the evidence, supporting documents and statements of case also has to be produced.
Making the correction in application would cost more:
In earlier, if any, error is made in the trademark application, that could be corrected by the way of filing “TM-16 form” but now the correction fee rate has been increased from Rs.500 to Rs.900. So you have to be very cautious while filing the trademark application.
By concluding with this, the trademark rules amendments are made to quicken the process of trademark registration. Rules are made in order to ease the process.
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