TRADEMARK FEES, FORMS & OTHER CHANGES
The
new Trademark Rules 2017 came into force. With this,
the earlier 2002 rules underwent a major overhaul. The primary purpose behind
this change is to simplify the Trademark registration process.
Another motive for this change
is improving the ease of doing
business in India. Special provisions for startups, individuals, and
small scale industries bear witness to this fact.
In line with the PM’s Digital India
initiative, the new rules promote E-filing by way of a 10 percent
discount on filing fee. But, the new rules have their pros and cons. Moreover,
the Trademark Rules 2017 hold different things in store for different entities.
So, below is an analysis of all the changes in
these rules along with their perks as well as flaws
Trademark
Rules 2017: All That Has Changed
1. Changes in trademark application forms
The
previous rules provided for a humongous number of 74 forms, one for each type
of application. The Trademark Rules 2017 bring this number down to a paltry 8.
The following table provides an insight into the use of each form.
|
Form
|
Purpose
|
|
Applying
for Registration
|
|
|
TM-C
|
Obtaining Search Certificate for Copyright Registration of
an Artistic Work
|
|
Applying for
Registration/Continuation/Restoration/Alteration in Details of a Trademark
Agent
|
|
|
TM-M
|
Requesting Inclusion of a Mark in the List of Well-Known
Trademarks/Applying for Amendment in Trademark Application/Seeking Registrar
Preliminary Advice or Grounds of Decision/Applying for Regulation of
Certification Trademark or Deposition of Regulation of Collective Trademark/Requesting
Review of Registrar’s Decision/Certified Copy/Duplicate Registration
Certificate/Extension of Time/Inspection of Documents/Particulars of Advertisement/Registrar’s
Order in a Contesting Proceeding/Any Other Miscellaneous Matter not covered
by other Forms
|
|
TM-O
|
Filing
Notice of Opposition with the Registrar of Trademarks/Applying
for Rectification of Register or Invalidation of a Trademark or a Related
Counter-Statement
|
|
TM-P
|
Requesting Replacement of Subsequent Proprietor as
Registered Proprietor/Amendment to details of Registered Proprietor or
Registered User/Amendment of Registered Trademark or Specification of Goods
or Services/Conversion of Goods/Dissolution of Association between Trademarks
|
|
Requesting
Renewal/Renewal with Surcharge/Restoration of a Trademark
|
|
|
TM-U
|
Applying for Recordal/Cancelation/Variation/Amendment in
Details of Registered User or Intervention in Proceedings by Third Party
|
It is clear that reducing the
number of Forms is a laudatory step. This is because it makes the entire
process much more simple and hassle free.
Instead of remembering and
filling a different form for each process, now it is easier to file an
application for all the different applications related to Trademarks or
Copyright.
The naming of Forms according to
the type of application makes the entire process even simpler. For instance,
TM-R stands for Renewal or Restoration application. TM-C stands for Copyright
Search Certificate. TM-U stands for Registered User Applications and so on.
2. Registration of a trademark
With a single form to apply for
all kinds of Trademark Registration applications, the process is easier than
before. Significant changes are the reduction in the number of forms and
increase in fee.
Let’s understand this with the
help of an example. P is an individual who needs to file a Trademark
Registration application for his/her business logo. Earlier, filing an
application for registration would mean submitting a number of forms.
TM-1 was filed for a regular application. Power of Attorney authorizing an agent to file the
application was filed in form TM-48. There were as many as 18 Forms for filing different
kinds of applications. For example, TM 64 for collective marks and TM 4 for certification Trademarks.
The Trademark Rules 2017 do away
with the complex procedure, providing a single form TM-A for all kinds of
applications. Now all you have to do is fill a single form, instead of trying
to find out which form to fill for a registration application.
3. Well-known trademarks
This is a significant change
from the earlier rules. Earlier, the judiciary had the power to decide if a
mark is well-known or not.
Moreover, such a situation would
arise only in cases of infringement. But, now an applicant can request the
Registrar to determine whether a Trademark is well-known or not by filing
Form-M along with the fee of Rs. 1,00,000.
This step seems to be arbitrary
and may work differently for different parties. It gives virtually unbounded
power to the Registrar. It also promotes exercise of unfettered discretion.
The judiciary exercises utmost
caution in determining the status of a mark. But, the Registrar may not do so.
It may prove to work to the advantage of influential parties and to the disadvantage
of others.
4. Increase in fee
With the coming into force of
the Trademark Rules 2017, Government
fee for almost all kind of applications has almost doubled. In
some cases, the rise is even more than 200 percent.
For instance, earlier the
application fee for each class was Rs. 4000. Now, the government fee for the
same is Rs. 10,000 (9,000 if the party opts for E-filing).
Earlier, the fee for registering
a subsequent proprietor used to start from Rs. 5,000. Now, the fee is Rs. 10,
000. Another example is the application for Search Certificate for Copyright
Registration. The new rules hike the former fee of Rs. 5,000 to Rs. 10,000.
The intent behind such a steep
hike in the applicable fee might be to prevent filing of frivolous
applications. However, raising the fee as much as 200 percent (more, in some
cases) is hard to justify.
The former fee of Rs. 5,000 for
Copyright Search Certificate was pretty high in itself. It brought the
Government fee for Copyright Registration of Artistic Work (for commercial use)
to Rs. 7,000. Now, a 200 percent increase will make it go further up to Rs.
12,000.
This means trouble for small
businesses or individuals proprietors. They can hardly afford to shell out an
amount this high to get a Copyright Registration for their business logo or
other artistic work.
5. Concession to small businesses, startups and individuals
The huge jump in the government
fee means shelling out more fee. But, the new rules provide much-needed relief
to entities in need of concession.
There is only an increase of Rs.
1,000 for individuals, startups and small enterprises. This means that the
Government fee for these parties is Rs. 5,000 instead of RS. 10,000. A further
discount of 10 percent on E-filing reduces the fee even more.With an E-filing
fee of Rs. 4,500 there is not much increase in the earlier fee.
This is good news for these
parties and also a considerate step. The government’s motto of promoting small
business as well as entrepreneurs will receive a definite boost with this concessional
fee.
6. Promoting e-filing
This rule is in complete sync
with the Digital India Drive. The fee schedule specifies a 10 percent discount
for E-filing of every kind of application.
Moreover, for some applications,
the new rules don’t allow physical filing at all. For instance, the application
for expedited issue of Copyright Search Certificate can only be made online.
Same is the case with expedited processing of an application for Trademark
Registration. Online filing is also compulsory for determining a well-known
Trademark. For certification or transmission of an international application
too, you need to apply online.
This is another welcome step.
Reducing unnecessary paperwork will achieve at least two results. First, it
will enable faster processing of application. This will reduce processing time
to a great extent. Second, less or minimal paperwork will improve the
efficiency as well as productivity of the Government Office.
7. Compulsory filing of user statement or affidavit
Earlier, the Registrar exercised
discretion when it came to User Statements in respect of marks claiming prior
use. The applicant only needed to specify two details. First, the date since
the mark was being used. Second, the person using it. Registrar could ask such
person for an affidavit to this effect.
Now, there is no more room for
Registrar’s discretion in this matter. If the user is claiming use of the mark
before the date of application, filing an affidavit is compulsory.
Compulsory filing of one more
document may be inconvenient for the applicant. But it is too early to comment
on any other adverse impact that it may have.
8. Registration of sound marks
The Trademark Act consists of provisions concerning Sound Marks. However, the 2002 rules did not mention them. The
Trademark Rules 2017 contain specific mention of these marks. Rule 26 (5) specifies the format for submitting a sound
mark for registration.
Insertion of this rule is a
welcome step as it gives some clarity on the mode of submission of a Sound
Mark.
Conclusion
Trademark Registration in India
has undergone a major change. The new Trademark Rules 2017 make the entire
process much easier with a number of new Rules. So, the final verdict on the
Trademark Rules 2017 leans more in their favour than against them. Steps such
as discount on E-filing, only a minor increase in fee for applicants who need
it, and making the entire process of registration simpler definitely deserve
praise. Some changes do remain questionable. For example, the whopping increase
in fee and the discretion granted to the Registrar in a case of well-known Trademarks.
However, as of now, the overall
changes which the Trademark Rules 2017 bring seem to be positive. Some
amendments in the future may correct the not-so-great and dubious parts of
these rules.
One major change is the
compulsory User Statement or Affidavit which is explained in more detail below.
As an individual, you don’t have
to pay the fee of Rs. 10,000. You can obtain Trademark Registration for Rs.
5,000 (Rs. 4,500 for E-filing). So, the fee remains more or less the same as
earlier.
Other requirements of filing
representations of Trademark remain the same.
Not changing the primary
requirements is a wise step. A complete revamp of the existing system would
have caused a lot of confusion and chaos.
Written By:
CS DIWAKAR AGRAWAL
MOB: +91-9911746549
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