Trademark Rules 2017
Trademark
Rules 2017 are a welcome step and were long awaited. There was a need to have
more robust, efficient and user-friendly framework for Trademark.
Trademark
Rules 2017 will encourage one and all to seek protection of their trade marks.
Convenience and E- filing has been promoted by certain major changes, which can
be listed as follows:
1. Digital
India: What an
example of this era! To promote paperless system in line with the Digital India
campaign, any physical filing of an application or document with the Trade Marks
Office shall entail an additional fee of approximately 10% and in some cases, physical
filings are not even permitted. The Trade Marks Office will now be serving documents
electronically via email.
2. Convenience
of Cost: The fee for
all activities has increased substantially – with a 100% or more increase for
filing applications and renewing registered marks. BUT important to note that
for promoting ‘start-ups’ and ‘small entities’ and Individuals, rebate of 50%
fee has been granted. Further the excess space fee provision for more than 500
characters has been removed.
3. How convenient: There were 74 different Forms under the old Rules for
activities connected with the life cycle of a trade mark – filing,
registration, renewal, oppositions, assignments etc. Now these have been
replaced with 8 comprehensive Forms.
4. An Affidavit with supporting documents would be
required for those trade mark applications which need to be filed with a claim
of use.
5. Status: “Well-Known” have been incorporated. Any person, by
filing an appropriate form with fees 1 Lakhs or equivalent along with a
Statement of case supported by documentary evidence, can request the Registrar
to determine its mark as ‘well-known’. Before determining a trade mark as
“well-known”, the Registrar may invite objections from the general public to be
filed within thirty days from the date of invitation of such objections.
6. The Registered proprietors can now file renewal
requests within one year before the date of expiration earlier it was
six months.
7. It has been amended, now no extension in filing
evidences in Opposition proceedings for the speedy disposal.
8. This rule allows applicants to fast track the
processing of their trade mark applications, which now would not only involve a
speedier examination process, but also faster processing at every subsequent
stage until grant of registration, as applicable.
9. Counterstatement filed in response to Notice of
Opposition available online obviates its official service requirement.
10. Time for filing ‘evidence in support of opposition’
and ‘evidence in support of application’ is two months. Time for filing
‘evidence in reply’ is one month. All timelines were earlier extendible
by one month which is no longer.
11. Each party can apply for a maximum of two adjournments
of a hearing.
12. In cancellation actions, if a registered proprietor
does not file a counter statement within the prescribed time period, the
applicant applying for cancellation can file evidence without waiting for the
Registrar’s formal intimation. Also, an impugned registration will not be cancelled
simply because its registered proprietor does not file a counter statement
within time.
13. In uncontested cases, if an applicant/ opponent does
not want to pursue an application/opposition, it should be specifically
withdrawn and not abandoned; otherwise the Registrar can award costs which
would be in excess of what it would cost to formally withdraw the application/
opposition in question.
14. In case of revocation of authorization of agent by an
applicant or opponent, or withdrawal by an agent from any proceedings, the
applicant or opponent must provide a fresh address for service in India within
a period of two months. If not, the application/opposition will be deemed
abandoned.
15. Hearings: Provision for attending hearings through video
conferencing or other audio visual communication devices has been introduced.
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