Insights of Trademark Rules, 2017

Therefore, Trademarks which includes word/ logo/ label are important intellectual properties, so it needs to be chosen very carefully.

A Trademark is an intellectual property that literally means the name/ sign/ logo which helps in distinguishing your business’ goods or services from those of other businesses.

In Simple words, a Trademark is a name/sign/logo, which is used to identify and promote a product(s) or service(s).

The new Trademark Rules, 2017 came into existence from March 6, 2017, which makes the entire trademark registration process easy & hassle-free and The Trademark Rules, 2002 are hereby repealed without prejudice to anything done under such rules before the coming into force of these rules.

Highlights  of Trademark Rules, 2017:

1. Speedy Examination of application
2. E- filling of documents
3. Number of forms reduced
4. Hike in fees
5. Sound marks can also be registered
6. Reduction in number of adjournments
   

The fee for online filing of application has been reduced by 10% from physical filing of application.

1. Form Filling: Process of Registration for Trademark application under ‘Trademark Rules, 2017’-

1.1. For Registration of trademark in respect of goods or services, an application shall be made in Form TM-A (physical filing- INR 5,000*/10,000** & E-filing- INR 4500*/9000**) and shall be signed by an applicant or his agent.

      *where the applicant is an Individual/ Startup/ Small Enterprise, for each class and for      each mark,

    **In all other cases, for each class and for each mark

In other words, a trademark application can be filed for a single or multi case.

1.2 In case right to priority is claimed from convention Country, a certificate by the Registrar or competent Authority of that trademark office, shall be submitted with the application for registration of trademark.

1.3 Every application for the registration of a trademark, and where additional copies of the application are required, every such copy shall contain a clear and legible representation of the trademark of size not exceeding 8cm * 8cm.

1.4 Every application for registration of a trademark in respect of any goods or services shall be acknowledged by giving a system generated electronic receipt or sending such receipt to the e-mail address provided for the purpose.

2. Examination of application (Examination Report):

After the receipt of application, the application shall be examined as per the provisions of this Act, and also the previously registered/ applied trademarks shall also be considered.

After examining the application, there will be either of the two outcomes:

• Objection, or
• Acceptance

In both the cases, whether objection or acceptance, after considering the application for registration of trademark, the Registrar shall communicate in writing to the applicant in examination report.

3. Response:

3.1 If applicant fails to respond- If within stipulated time i.e. one month of communication of Examination Report, the applicant fails to respond, the Registrar may treat the application as abandoned.

3.2 If applicant response made within stipulated time– In case the response received within stipulated time i.e. one month of communication of Examination Report, and if the Registrar accepts the application for registration, the same shall be communicated to the applicant and cause the application to be advertised.

4. Hearing(voluntary or mandatory):

If the response to the examination report is not satisfactory or where the applicant has requested for hearing, the Registrar shall provide an opportunity of hearing to the applicant as per Rule 115.

4.1 If applicant fails to appear– Where the applicant fails to appear at the scheduled date of hearing and no reply to the office objection has been submitted, the Registrar may treat the application as abandoned.

4.2 If applicant appears– Where the applicant submitted his reply to the examination report within the stipulated time or has appeared in the hearing and made his submissions, Registrar shall pass an appropriate order.

5. Objection, after acceptance but before registration:

The Registrar may raise objection after accepting the application but before registration on the ground that it was accepted in error, or that the trademark ought not to have been accepted in the circumstances of the case, or proposes that the trademark should be registered only subject to conditions, limitations, divisions or to conditions additional to or different from the conditions, or limitations, subject to which the application has been accepted, the Registrar shall communicate such objection in writing to the applicant.

If within 30 days, applicant does not amends the application as per the requirement of Registrar or applies for the hearing, the acceptance of registration shall be deemed to be withdrawn by the Registrar, and the application shall proceed as if it had not been accepted.

Where the applicant opts for hearing, the Registrar may, after hearing the applicant, on considering the submissions, if any of the applicant, pass such order as he may deem fit.

6. Advertisement:

After acceptance of trademark application, the same shall be published in Trademark Journal.

Journal means the trademarks Journal which are made available at official website of Controller General of Patents, Designs and Trademarks.

7. Opposition:

Now, when the application is published in Trademark Journal, general public has an opportunity to raise objection within 4 months from the date of publication in Trademark Journal.

8. Hearing and Decision:

If the registration application is opposed, then hearing will be called by Trademark Hearing Officer. Registrar shall give notice to both the parties:

• Trademark Applicant and
• Opposing Party

Both the parties have the right to presents there grounds for registration of application or for rejection of trademark application. After hearing, based on this, the officer may reject or accept the application for registration.

9. Certificate of Registration:

If on hearing, there are no objections for the trademark registration, the Registrar shall issue the certificate of registration on Form RG-2. It shall bear the seal of the Trade mark Registry.

After the issuance of certificate of registration, the applicant shall be the exclusive Trademark owner.

Renewal of Registration:

An application for the renewal (after every 10 years) of the registration of a trademark shall be made in Form TM- along with the prescribed fees, not more than 1 year before the expiration of the last registration of the trademark.

Lets illustrate: Suppose a Trademark has been registered (or the year of use) in the year 2010, as per the provisions of these rules,  though the Trademark will expire in the year 2020, but it shall be renewed in the year 2019

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In case of death of applicant before registration:

In case of any death of any applicant for the registration of a trademark after the date of his application and before the trademark has been entered in the registrar, the Registrar may, on request on Form TM-M and on proof of the applicant’s death and on proof of the transmission of the interest of the deceased person, substitute in the application, the name of successor in interest in place of the name of such deceased applicant, and the application may proceed thereafter as so amended.

Author: C S Ekta Maheshwari is the Author of this article and is Company Secretary by profession. The Author can be reached at csektamaheshwari14@gmail.com

Disclaimer: The entire contents of this article is solely for information purpose and have been prepared on the basis of relevant provisions and as per the information existing at the time of the preparation.. It doesn’t constitute professional advice or a formal recommendation. The author has undertook utmost care to disseminate the true and correct view and doesn’t accept liability for any errors or omissions. You are kindly requested to verify & confirm the updates from the genuine sources before acting on any of the information’s provided herein above.