Draft Trademark (Amendment) Rules, 2015: Yay or Nay?
On 19th November, 2015 Draft Trademark (Amendment) Rules, 2015 were issued by the Ministry of Commerce and Industry (MCI). The Rules are intended to amend the current Trademark Rules, 2002 and have proposed a complete revamping of the same. The rules propose the trademark filing fee to be doubled, which means a hundred percent hike in official charges.
The Digital India initiative has gone a step further, by discouraging physical filing of Trade Mark applications. The applicants will be required to pay an extra ten percent of the fee as compared to filing an e-application. Further, applications for sound-marks can now be accompanied by a sound-file in MP3 format.
The Draft Rules propose only eight forms in toto, for filing various applications. Reduction in the number of forms will simplify the filling process to a great extent. The new forms for various actions are as follows:
- TM A-Application for registration of any good/services
- TM M- Request for any amendment in application, grounds of decision, expedite examination, request for inclusion of a mark as well-known etc
- TM R-All Renewal related matters
- TM C-Application for Search Certificate request
- TM O- All opposition matters
- TM P- Applications to dissolve association, assignment; amendment for description of goods/services, etc
- TM U-Application for Registered users, etc
- TM G- Applications related for Trade mark Agent
A mark will be considered as a well known mark depending on the decision of the Registrar. He shall also have discretion with respect to the criteria for deciding the well-known status of a mark. For the mark to be included in the list of well known mark a fee of rupees one lakh has to be paid. This list will be maintained by the Registry.
The reduction in number of forms is a welcome change. The wide discretionary powers given to the Registrar, which pertain to well-knownness of a Trade Mark, can be a cause of concern. Section 11, of the Trademarks Act, 1999 already lays down the factors that can determine whether a mark is well known or not. The new Draft Rules could have laid similar criteria, instead of leaving it on the discretion of the Registrar.
The Draft Rules could have focused on setting strict time lines for issuing of the examination report, call for hearing etc, in order to shorten the actual time taken in processing the application for registration.
Authored by Sambhabi Patnaik.
Contributed by Trade Mark Attorneys of BananaIP in India
For information on trade mark law in India, write to [email protected]