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June 12, 2017

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The Good, Bad, and Challenges of the new Trade Mark Rules, 2017


- Ranjan Narula, Managing Partner [ RNA, IP Attorneys ]
- Rajiv Suri, Partner [ RNA, IP Attorneys ]

Ranjan Narula, Rajiv Suri

The Trade Marks Registry has notified the new Trade Mark Rules, 2017. The changes when looked at from the viewpoint of streamlining the functioning of the Trade Marks Registry and embracing technology to expedite the registration process are laudable. We thought to analyze these changes and how they will pan out in practise. We have classified them in three buckets: good, bad, and challenges

Good

  1. Reduction in the number of forms for each activity during the lifecycle of a trademark. Now, there are only eight forms in totality from the earlier 75 forms. The reduction in the number of forms will simplify filing/s for applicants as a single form can be used to cover multiple tasks, although these are required to be filed separately.
  2. To encourage online filing, the Registry has incentivized the agent/applicant to file applications/documents electronically/online and pay 10% less fees on such filing.
  3. To encourage individuals, start-ups, and small enterprises to create and protect their brand, further reduction has been offered in official fees.
  4. Procedure for recording a mark as “well-known” has been laid out, including publication of a well-known mark for objection by a third party before granting coveted status of the “well known” mark.
  5. To move all communications through email, it is now mandatory for applicants to provide email address.
  6. Hearing through video-conferencing or other audio-video communication devices has been provided.
  7. To reduce delays in the disposal of opposition, it has been provided that a party cannot ask for more than two adjournments. This will likely reduce the time for decision.
  8. The procedure for filing sound mark applications by providing MP3 files along with a graphical representation of the musical notations has been provided.

Bad

While it sounds being critical to group them under the heading “bad,” we have provided our reasons for doing so.

  1. Expedited examination of an application: We have placed this under the “bad” category as the Registry is already struggling with backlog and this provision will only disrupt the current working. In particular, the new Rule now provides expeditious processing of the application on the payment of fees which would inter alia include the setting up of show cause hearing, if required, and the publication of the application and opposition thereto, if any, till the final disposal of the application. All such proceedings would be dealt with expeditiously. Thus, one can jump the queue if one can afford it.
  2. In opposition/s cases, no extension to be allowed for filing evidence. It is a fixed two months’ period, which, on the face of it, is a good step. However, it is equally possible that the parties may not be able to meet the deadline, especially the ones that are based outside India given that the affidavit must be filed as a paper copy in original. In the digitized environment, a concession could have been made as regards the filing of a scanned copy followed by a paper copy to meet the strict timelines.
  3. The secrecy of the implementation of the Rules was maintained, and no sunrise period was provided to the applicants/stakeholders. As a result, frequent technical glitches are being faced in online filing processes.

Challenges

The New Rules list out several steps taken by the Indian government to streamline the functioning of the Intellectual Property office and to somehow reduce frivolous new filings

The new Rules list out several steps taken by the Indian government to streamline the functioning of the Intellectual Property office and to somehow reduce frivolous new filings so as to expedite the process of filing, grant, recordation/ updating of records, and opposition. However, it does not seem to address the current challenges in clearing backlog:

  1. Currently, several hundred applications, whether filed through Madrid or national applications which have received preliminary refusal, are awaiting scrutiny by the examiner/s.
  2. There is an opposition gridlock at the Trade Marks Registry with more than 114,218 oppositions pending as per the summary of applications under oppositions given on “Dynamic Utilities” of the TM Registry website.
  3. The new Rules for the declaration of well-known marks, it seems, will need a separate department as current officers (Senior Examiner, Assistant Registrar, and Deputy Registrar), who will be expected to scrutinize the applications, struggle to cope up with the workload. Thus, brand owners may find the whole process taking far too long.

Overall, more good than bad.

Disclaimer – The views expressed in this article are the personal views of the author and are purely informative in nature.

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