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Proposed Amendments to Indian Trademark Law

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.

  • 100% Hike in Filing Fee
  • Reduction in No. of Forms
  • Sound Mark
  • Expedited Examination
  • Statement of Use
  • Well Known Trademarks

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)

KAnalysis Consultants is Your Cost Effective and Trusted partner for all Trademark Filing and Registration Requirements offering End-to-End solution for Companies / Law Firms / Investors and Brand Owners in Filing and Prosecution of Trademarks in India.

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