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. Yes the cost is there of convenience: 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 the case.
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.