Proposed Draft of Trademark (Amendment) Rules 2015 has been laid open by Ministry of Commerce and Industry on November 19, 2015 inviting observations from stakeholders and the public within a period of 30 days. Some notable proposed amendments are presented below in a concise manner.
|
Fee Hike
The Rule proposes a 100% hike in official filing fee and hence subsequent filings of a Trademark in India would cost double to an applicant.
Further, to streamline current trademark practice, promote e-filing, and reduce the work load; an additional fee of 10% on the official fee in case of physical filing has been proposed. The other proposed changes in the Fee Structure are:
S. No.
|
Particulars |
Current Fee |
New E-Filing |
Paper Filing |
|
1 |
Application for registering in one class | ₹ 4,000 | ₹ 8,000 | ₹ 8,800 |
|
2 |
Counter-statement to a notice of opposition | ₹ 1,000 | ₹ 2,000 | ₹ 2,200 |
|
3 |
Renewal of registration in one class | ₹ 5,000 | ₹ 10,000 | ₹ 11,000 |
|
4 |
Renewal when not renewed within time | ₹ 3,000 | ₹ 6,000 | ₹ 6,600 |
|
5 |
Restoration within 1 year from the expiry date | ₹ 5,000 | ₹ 10,000 | ₹ 11,000 |
|
6 |
Assignment within 6 month of assignment | ₹ 5,000 | ₹ 10,000 | ₹ 11,000 |
|
7 |
Assignment within one year of assignment | ₹ 7,500 | ₹ 15,000 | ₹ 16,500 |
|
8 |
Assignment of trademark after one year of assignment | ₹ 10,000 | ₹ 20,000 | ₹ 22,000 |
|
9 |
Request for expedited examination of the application | ₹ 20,000 | ₹ 40,000 | ₹ 44,000 |
|
10 |
Request for inclusion in list of well-known trademarks | Non Existent | ₹ 1,00,000 | ₹ 1,10,000 |
Reduction in Number of Forms
The amendment proposes that the number of forms used for filing various applications be reduced. The proposal aims to simplify the filing process and suggests for a total of only Eight forms, as:
S. No. |
Particulars |
Form Number |
|
1 |
Application for registration of any good/services |
TM A |
|
2 |
Request for any amendment in application, grounds of decision, expedite examination, request for inclusion of a mark as well-known, authorization of an agent etc. |
TM M |
|
3 |
All Renewal related matters |
TM R |
|
4 |
Application for Search Certificate request |
TM C |
|
5 |
All opposition matters |
TM O |
|
6 |
Applications to dissolve association, assignment; amendment for description of goods/services, etc. |
TM P |
|
7 |
Assignment within one year of assignment |
TM U |
|
8 |
Applications related for Trade mark Agent |
TM G |
| Sound Mark The amendment provisions for filing an application for registration of sound marks. It is proposed that a sound file in MP3 format not exceeding 30 seconds along with graphical representation of its notation would be required to be submitted along with the application. |
Expedited Examination The amendment provisions for filing request for expedited examination of an application. It is proposed that the request should be made before the issuance of the examination report. Such requests would entail show cause hearing, publication and opposition, till final disposal be dealt expeditiously. |
Statement of Use in Applications
The Amendment proposes that an affidavit testifying, the use of trademark along with supporting documents be submitted at the time of filing of application, if a trademark claims, use prior to the date of examination. Presently, it is required only when requested by the Examiner at a later stage.
Well Known Trademarks
A significant provision in the proposed amendment is the power given to the Registrar of trademarks to review an application to include a mark in the list of well-known trademarks. It also provides discretionary power to Registrar for inclusion or removal of a trademark in the list of well-known trademarks. The official fee for inclusion of a mark in the list of well-known trademarks is kept at ₹ 100,000 (INR One Hundred Thousand).
Therefore, it is advisable to proceed with filings before these proposed amendments come into force, to save some filing costs.
Requirements for Filing TM Application with Indian Patent and Trademark Office:
- A soft copy of the mark to be registered
- First use Date of Mark (required in case, Mark is already in use)
- Description of related Goods and Services for which protection is sought
- Complete Details of the Applicant
- Power of attorney signed by the applicant (can be submitted later with no additional cost)
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