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New Rules, New Moves

New Rules, New Moves

Change is a part of business. The structure or the body of business need not change, but the operation and structure of function goes under certain changes. Also, the major factor that brings a change in business is the dynamic law of the land, which compels business to change certain things in a manner as defined by the law. In order to abide by the law it is necessary to first understand the law. IBS India being the expert in providing the best legal and financial consulting helps businesses to understand the law. Understanding the law helps to incorporate better business structuring plans and incorporation of the company in a better way. Being one of the best consultancy service providers in India, IBS India serves businesses and enterprises with best legal advisory services in India.

The new Trade Marks Rules, 2017 came into effect from 6th March 2017 to replace the rules of 2002.

The objective of the new Trade Marks Rules, 2017 is to achieve a more streamlined, well-organized, and quick results oriented approach for users. The New Trade Marks Rules, 2017 aims for consumer to go into digital and paperless transactions.

Efforts to promote e-digitization can be seen in the introduction of the e-filing procedure. There are some noteworthy features of the new Trade Marks Rules, 2017. Some of the major impactful changes are as under:

RISE IN THE FEES OF TRADEMARK OFFICIALS

The most perceptible change brought under the new rule is the significant rise in the fees for filing e-forms application of the Trade Mark. There are two ways through which the applications and documents can be filed / submitted, namely (Online Method) e-filing and (Offline Method) Physical Filing.

The Trade Mark application fees for new Trade Mark registration / Mark / or series of Trade Mark for specification of Goods or services included under one class has been increased to Rs. 9000/- of e-filing and Rs. 10000/- for Physical Filing. However, a considerable discount for Individual’s/ Start up’s and Small Enterprises has been provided to inspire and assist them in safeguarding and protecting their Trade Mark - with them being charged a discounted rate of Rs. 4500/- for e-filing and Rs. 5000/- for Physical Filing.

In order to boost e-filing of Trade Mark Applications, 10% discount is provided for paperless transaction, thus enhancing the scope of Digitization.

CUTTING DOWN OF NEW FORMS FROM 75 TO 8

Earlier there were 75 separate forms for application which have been curtailed to 8 and applications thereby streamlining the whole filing and prosecution process. Now, all Trademark applications whether single class, multi-class, collective marks are through the same e-form.

AFFIDAVIT AND SUPPORTING DOCUMENTS NEEDS TO BE FILED FOR THE CLAIM OF “USE” OF APPLICANT

For trade mark applications which are needed to be filed with a “claim of use”, the trade mark owners are required to file affidavit claiming that they are using the Mark since the stated year, along with the proof of use of the such mark.

TRADE MARKS OFFICE TO CONFER “WELL-KNOWN” STATUS

Provisions for determining and declaring a trade mark as “well-known” have been integrated in the new Rule 124, which states that any applicant can register marks as a well-known mark with the Registrar of Trade Mark along with statement of case, evidence and documents and fee of Rs. 1,00,000/- (Rupees One lakh Only). Prior to making decision, the Registrar must invite objections from the general public to be filed within thirty days from the date of invitation of such objections. Once the Trademark is declared as well-known trademark, it would be published in the journal.

REGISTRATIONS OF SOUND MARKS ARE ANNOUNCED

The new Rules also provides for sounds registration. Applications for sound marks should be submitted in a MP3 format, not exceeding 30 seconds in length along with the graphical representation of the sound notations.

REGISTRATION OF 3D MARK

The application for 3-D marks is filed in Form TM and it shall specifically be stated that the mark is 3-D mark. Two-dimensional graphic reproduction of the trademark has to be furnished in three diverse views. In case the Registrar considers that the trademark is not 3-dimensionl mark then he may call upon the applicant to furnish up to five further different views of the trademark and description of words and if needed for additional description, specimen of the Trademark.

FAST TRACK TRADEMARK APPLICATION

The Rule 34 of the new Trade Marks Rules, 2017 provides the welcome facility of making an online request for expedited processing of the application for the registration of a Trade Mark in FORM-M on payment of fees. In the new rules, every step of the process is expedited. Such application shall be examined expeditiously and ordinarily within three months from the date of submission of the application. The consideration of the response of the examination report, scheduling of show cause hearing, if required, publication of application and opposition till final disposal of the application will all be expedited.

REDUCTION AND LIMITATION IN NUMBER OF ADJOURNMENT

During an opposition hearing, a party is not entitled to ask for more than two adjournments thus reducing the time for the registration of trademarks.

ELECTRONIC SERVICE OF DOCUMENTS

In order to bring simplicity and good organization in official correspondence, the trade marks office will now be serving documents by electronic means via email as opposed to physically serving them.

RENEWAL APPLICATION

Application for renewal of registration of a trademark may be filed within one year before the expiration of the registration of the trademark under “FORM TM-R” with the prescribed fee. Earlier, the application for renewal could be filed only six months prior to the expiration of the trademark.

HEARING VIA VIDEO CONFERENCING

Under Rule 115, of the new Trade Marks Rules, 2017 any hearing could be conducted through video conferencing or any other audio & visual communication. This is a very motivating measure to increase efficiency.

There are several initiatives which have been amended to accelerate the trade mark registration process simplified and user friendly. Further, these initiatives have also resulted in the effective disposal of pending matters. Now with the enforcement it is expected that vigorous changes will be brought about and encourage everyone to seek shield their Trade Marks.

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