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

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

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.