The Ministry of Commerce and Industry, Department of Industrial Policy and Promotion (“DIPP“) issued a notification on November 19th, 2015 publishing the draft Trademark (Amendment) Rules, 2015 (“Draft Rules“) seeking to amend the Trademark Rules, 2002 (“Trademark Rules“).
The proposed Draft Rules seeks to simplify the complex registration process. The objective of the Draft Rules is to create a more organised system of filing applications which will result in the efficient processing of applications. In light of this, it is imperative that we acknowledge and appreciate the efforts that have gone into making the proposed Draft Rules.
The important changes such as the requirement of proof of usage, minimizing the number of forms and maintaining a list of well known Trademarks are appreciated as it provides clarity and allows for effective disposal of applications. However in the interest of reducing the time involved in the registration process, the Draft Rules could have focused on setting strict time lines for issuance of examination reports and scheduling of hearings.
The Ministry has proposed a complete revamping of the Rules. The proposed amendment of the Draft Rules and our opinion/suggestions are as follows:
- Increase in Fees:
The rules propose a hundred percent increase in official fee for Trademark Application, Renewal and Restoration of Trademark within one year of its expiration, etc. In our opinion; the new proposed fee may reduce the number of applications before the Trademark Registry. It is presumed that following the decrease in number of applications, the Trademark Registry may process pending applications more efficiently. However, we suggest that, instead of proposing a high fee for all applications, a graded fee structure (for natural persons, for corporation etc) similar to that followed for Patent and Design applications needs to be considered.
- E-filing v Paper filing:
The Digital India initiative has gone a step further, by discouraging physical filing of Trademark applications. The applicants will be required to pay an extra ten percent of the fee as compared to filing an e-application. In our opinion, the incentive of a lower filing fee for an online application will only be justified if the online filing website is effective and efficient in processing the applications. We suggest that the Registry can be more adaptive to the electronic means of communications to facilitate the faster disposal of applications. The number of online applications will increase as the applicants have to pay a higher fee for physical filing. The website for online filing is very slow and not functional on several instances. The website needs to be faster and more efficient for facilitating online filing of applications, to justify the increase in fee for physical filing.
The Draft Rules propose only eight forms in total, for filing various applications.The new forms for various actions are as follows:
- TM-A: Application for registration of any good/services
- TM-M: Request for any modification with respect to any application filed, grounds of decision, expedite examination, request for inclusion of a mark as well-known etc
- TM-R: Renewal related matters
- TM-C: Application for Search Certificate request
- TM-O:Opposition matters
- TM-P: Applications to dissolve association, assignment; amendment for description of goods/services, etc
- TM-U: Applications for Registered users, etc
- TM-G: Applications related to Trademark Agents
In our opinion, the classification of forms into different categories based on their usage may streamline the filling process. But there is a possibility that it may create confusion as to the specific purpose for which the Form has been filed. We suggest that the implementation of the new Forms be carried out on a temporary basis to ascertain the efficiency of the process. The successful implementation of the new Forms will depend on whether the Registry will be able to carry out the process and function efficiently.
- Preliminary advice by Registrar as to distinctiveness:
As per Rule 22 an application for preliminary advice from the Registrar as to distinctiveness can be made by filing Form TM-M along with one representation of the mark and the fee of Rs. 2000. In our opinion, the proposed Rules do not mention a time limit to provide within which the Registrar is required to provide the report. We suggest that the proposed increase in the fee for the advice must be considered only if there is a strict time period stipulated for the completion of the report.
- Statement of user in applications:
As per the Rule 26 of the Proposed Draft Rules, while applying for a trademark, the applicant has to provide a statement of the period during which, the person by whom it has been used in respect of all goods or services mentioned in the application, unless the mark is being filed as proposed to be used. In case, the claimed date of first use is prior to the date of application, the applicant has to file an affidavit testifying to such use along with supporting documents. In our opinion, the requirement for providing a statement of use of the mark is a welcome addition to the Rules. The requirement will help in processing the application during examination and hearing stage and might further help in fast disposal of the application. We however suggest that the Proposed Rule specify all the documents required to be filed along with the Affidavit which would qualify as proof of usage of the mark.
- Representation of mark:
According to Rule 27(5) of the Draft Rules, applications for sound marks must now be filed in MP3 format and must be accompanied with a graphical notation. In our opinion, the requirements for filing an application for Sound marks are clearly defined. However, Sound marks which cannot be represented graphically, might face difficulty in getting registration. We suggest that the requirement for graphical notation for sound marks may be a non-mandatory requirement /pre-requisite, as all sound marks cannot be represented with graphical notations.
- Expedited Processing of Applications:
According to Rule 35 of the Proposed Rules, applications for request of issuance of expedited examination report by filing a TM-M and paying five times of the application fee will also result in expeditious processing of the other proceedings (hearing, publication, opposition, etc) till the final disposal of application, which is not the case as per the present Rules. In our opinion, the proposed Rule is not time specific with regards to proceedings after issuance of Examination Report, and also the Rule leaves the Registrar with discretion so as to decide the modalities, which is vague. However, this is a better addition to the previous Rule for issuance of expedited Examination Report. We suggest that the proposed Rule provide specific time lines for each proceeding after the issuance of the Examination Report, in order to truly expedite the registration of the application.
- Determination of Well Known Trade Mark by Registrar:
As per Rule 127 of the Draft Rules, a mark may be determined as a well known mark and will be included in the list of well known marks based on the discretion of the Registrar. He shall also have discretion with respect to the criteria for deciding the well-known status of a mark. To be included in the list of well known mark the applicant has to pay a fee of Rupees one lakh. This list will be maintained by the Registry. The Registrar can also remove the mark from this list at any point of time, if it is found that a trade mark has been erroneously or inadvertently added to the list of well known marks. In our opinion, the proposed change to maintain a list of well know Trade Marks is a welcome change as it brings more certainty for marks to claim protection under the well known mark status. Although, the lack of clearly defined requirements to be fulfilled by the registered user to acquire well known status for the mark leaves the Registrar with an arbitrary power to define the same. The Draft Rules are silent with regards to refund of fee paid for a mark to be included in the well known trade mark list, in case of refusal, abandonment and removal of such applications. We suggest that, like the Trademarks Act, 1999 which lays down the requirements of a mark to be deemed a well known mark; the Draft Rules must provide specific grounds for a mark to be included in the well known mark list. The inclusion and removal of a mark from the well know marks list should not solely be dependent on the discretion of the Registrar. Moreover an opportunity of hearing should be given to contest the removal of the mark from the well know mark list.
The amendments proposed in the Draft Rules have suggested a lot of primary changes in terms of a list of well known marks to be maintained by the Registry, number of forms under the Act and official fee for different applications. Some of the proposed rules are a welcome change in the hope that this might lead to the speedy disposal of applications for registration. However few of the changes seem to be unfavourable towards the applicants, such as the increase in expenses involved in the trade mark process which may affect the number of new applications filed by small and mid-size enterprises.
Authored by Ryan Mendonca and Sambhabi Patnaik
Contributed with the support of the Trademark Division at BananaIP Counsels
For any Trademark related queries and assistance, please write to us at [email protected]