The Ministry of Commerce and Industry, Department of Industrial Policy & Promotion (DIPP) has published Draft Trade Marks (Amendment) Rules, 2015 inviting objects and suggestions from the general public. Once the Government receives comments from the stake holders, and modifications if any are made, it will published in the Gazette with an effective date. However, in the past, on occasions the amendments to the Trademark Rules have been given retrospective effect and the additional fees collected from the applicants/proprietors.

The Rules are intended to amend the current Trademark Rules, 2002 and have proposed a complete revamping of the same. The main highlights of the proposed amendments are in the following terms:

Number of forms reduced

The Draft Rules have reduced the total number of forms to 8, for filing various applications. Reduction in the number of forms will simplify the filing process to a great extent.

  • Proposed forms for various actions

Form

Purpose / Use
TM A Application for registration of any goods/services
TM M Request for any amendment in application, grounds of decision, expedite examination, request for inclusion of a mark as well-known etc.
TM R All renewal-related matters
TM C Application for Search Certificate request
TM O All opposition matters
TM P Applications to dissolve association, assignment; amendment for description of goods/services, etc.
TM U Application for Registered users, etc.
TM G Applications related for Trade mark Agent
  • Fee for filing application has been increased.
  • Deficient fee critical: in the event an application at the first instance is filed with any deficient fee or without fee, the same shall be deemed not to have been filed for all purposes.
  • Registration under different classes to be specified at the first instance: If registration of trademark is desired under different classes then all intended classes have to be mentioned at the first instance while filing the application for registration. Earlier, while seeking registration under additional class, the date of application was deemed from the date of the first application. However, under the proposed Rules, the subsequent request will be counted from the date of the fresh application.
  • Now the Forms required to be submitted have to be the exact replica of the form available on the site. Earlier, only the main contents of the prescribed forms had to be necessarily mentioned in the application.
  • No hand written information is permissible now. All filings have to be typed and submitted in the exact replica of the prescribed format.
  • IP gateway – all filings not requiring any fee deposit can be made under a separate window.
  • Address of the applicant has to be correct and no follow up would be done by the Registrar. On change of attorney/agent, service would be done on the (Indian) address provided by the applicant.
  • The Classification provided under Schedule IV to be replaced by “the International classification of Goods and Services” (the NICE classification), published by the WIPO.
  • Registrar to maintain a list of well known registered/non registered marks. Request can be made for inclusion in such list on payment of fees, subject however to the discretion of the Registrar.
  • Regarding application under convention arrangement for claiming priority, it has been proposed that only a single priority shall be claimed in respect of all the goods or services mentioned in the Application for registration of trademark.
  • Number of reproductions to be submitted along with the application has been reduced.
  • Notice of hearing will be sent by the Registrar in all cases, and will not be optional now.

Comparative analysis between old and new Draft Trademark Rules

Below is your comparative analysis converted into a clear table.

Comparative Table – Old vs New Provisions

Old Provision

New Provision

Comment
Rule 11(3) – Fees may be paid by a bank draft issued or a cheque drawn on a scheduled bank. Rule 10(3) – Fees may be paid by a bank draft issued or a banker’s cheque drawn on a scheduled bank. In erstwhile Rule 11 (now Rule 10), the mode of payment of fee has been amended, i.e. payment by way of a cheque has been substituted by payment by way of banker’s cheque. Further, the payment by way of any instrument, if sent by post shall be deemed to be paid only if the same is received in the office, whereas earlier the payment was deemed made if the same was “delivered in the ordinary course of post”.
Rule 11(5) – Includes provisions contained in sub-rule 19 of Rule 25 for payment of fees for filing a document. Rule 10(5) – Provisions contained in sub-rule 19 of Rule 25 no longer applicable. In erstwhile Rule 11 (now Rule 10) sub-rule 5, the exception as to cases falling under sub-rule 19 of Rule 25 has been omitted. Sub-rule 19 of Rule 25 provided for amendment of the application by payment of the deficient fee and in such cases date of filing would be the original filing date. In effect, if an application at the first instance is filed with any deficient fee or without fee, the same shall be deemed not to have been filed for all purposes.
Rule 12(3) – Use of form in the schedules satisfied by use of either a replica of that form or of a form which is acceptable to the Registrar. Rule 11(3) – Use of form in the schedules satisfied by the use of a replica of that form only. In erstwhile Rule 12 (now Rule 11), it is now mandated that the form of application should only be a replica of the form provided in the Schedule. Earlier, either such replica could be used or any form acceptable to the Registrar that contained all required information.
Rule 13(1) – Documents may be neatly handwritten or typewritten or lithographed or printed in Hindi or English, of size approx. 33 cm x 20 cm. Rule 12(1) – All applications/statements/notices/documents shall be typewritten or computer print-out in Hindi or English in legible characters. Under erstwhile Rule 13 (now Rule 12), documents to be filed could be handwritten, typewritten, lithographed or printed. Under the amended rule, documents can only be typewritten or computer printout. The prescribed physical size (33 cm x 20 cm) has been omitted.
Rule 15(6) – Registrar may, after informing the public in the Journal, accept communications of a routine nature through E-mail. Rule 14(6) – Registrar may, after informing the public in the Journal, accept notices, applications or statements online through the gateway provided for this purpose through designated e-mail for the purpose. Provision for service of documents through fax has been omitted. Service through the prescribed electronic gateway/portal has been provided, and also through email where documents are to be submitted without any fee.
Rule 20 – Non-availability of an address for service. Rule 19(1) & (3) – All communications and documents may be served by the Registrar by leaving them at, or sending them by post to, the address of the party concerned or by e-mail communication. To prove such service it shall be sufficient that the letter was properly addressed and sent to the e-mail ID provided. Rule 20 providing for “Non availability of address for service” has been omitted and a new Rule 19 inserted providing for “Service of documents by the Registrar”. These changes oblige the applicant to provide the correct address for service and ensure it is updated in case of change.
Rule 20(4) – On withdrawal by the agent, the applicant/opponent has 2 months to provide an address for service in India, failing which the application/opposition is deemed abandoned. (Substance carried into the proposed rules without a specific rule number in your extract.) The proposed Rules provide that in case of withdrawal or revocation of an agent, and if no principal place of business in India is provided, the applicant must within 2 months provide an address for service. Failure will be treated as abandonment of the application.
Rule 21 – Classification of goods and services as per current edition of the International Classification (NICE) published by WIPO was brought in. (Now expressly: Classification as per NICE; Fourth Schedule classification replaced.) The classification of Goods and Services earlier provided under the Fourth Schedule has been replaced with classification as per the current edition of the International Classification (NICE), published by WIPO. Registrar shall publish a class-wise and alphabetical index of such goods/services, including Indian-origin goods/services.
Rule 23 – Preliminary advice by Registrar as to distinctiveness. Rule 22 – Application for preliminary advice under Section 133(1) to be made in Form TM-M with prescribed fee and one representation. Regarding preliminary advice, application may now be made in the prescribed form for goods/services comprised in the class as published by the Registrar under Rule 21(2), along with fee (entry 45 of First Schedule) and one representation. Earlier, three representations were required.
Proviso to Rule 24 (old Rule 25) – Names of goods/services in the application shall, as far as may be, correspond to those in the classification published by the Registrar. Proposed Rule 24 Proviso – Same requirement explicitly tied to classification published under Rule 21(2). A proviso has been inserted in proposed Rule 24 (corresponding to existing Rule 25) reiterating that the names of goods/services in the application shall, as far as may be, correspond to those in the Registrar’s published classification.
Rule 25(19) – Applicant filing a single application for more than one class could amend to add classes on payment of fee; date of filing remained original. Rule 24 – Form and signing of applications (amended) – Provision as to amendment to add additional classes omitted. Existing Rule 25(19) has been amended/omitted with respect to adding classes. An applicant must now specify, with due caution, all classes in which registration is sought at the outset, as no later amendment to add classes is provided.
Rule 26 – Where more than one priority claim is filed under Section 154, Registrar shall take earlier convention date as priority. Rule 25 (new) – A single priority shall only be claimed in respect of all the goods/services mentioned in the application under Rule 24(1). For convention priority, only a single priority shall be claimed in respect of all goods/services in the application.
Rule 27 – Application to register a trademark shall contain a statement of the period during which, and the person by whom, it has been used. Rule 26 – In case use is claimed prior to application date, the applicant shall file an affidavit testifying such use with supporting documents. Existing Rule 27 has been tightened: where prior use is claimed, filing of an affidavit of user with documents is now obligatory.
Rule 29(2) – Application to be accompanied with one B&W and four colour reproductions where colour combination is claimed. Rule 28 – Application to be accompanied with one reproduction of the mark in the claimed combination of colours. For marks claiming combination of colours, only one reproduction in the claimed colours is now required; earlier, one B&W + four colour representations were needed.
Rule 37 – Acknowledgement of application by returning one additional representation of the mark with official number. Rule 33 – Acknowledgement by return of duplicate of the application with official number. Acknowledgement is proposed to be made on a duplicate copy of the application, instead of on an additional representation of the mark.
Rule 56 – Within 14 days of first notice, any party intending to appear must notify Registrar in Form TM-7; otherwise deemed not desiring to be heard. Rule 51 – Registrar to give notice of first date of hearing within 3 months of completion of evidence; hearing date at least one month after first notice. In the new Rule 51, the earlier text requiring notice in Form TM-7 within 14 days (failing which party deemed not desiring to be heard) has been omitted.
Rule 62(1) – Certificate of registration to be in Form Q-2. Rule 57(1) – Certificate to be in Form O-2 and include the trademark and seal of the Trademarks Registry. For certificate of registration, inclusion of the Registry seal is now mandatory; the earlier requirement of an unmounted representation exactly as in the application has been omitted.
Rule 71 – Registrar may call upon any person applying to be registered as proprietor of a registered trademark to furnish proof/additional proof of title as may be required. Rule 78 Proviso – Registrar may call upon such proof only where there is reasonable doubt about the veracity of any statement/document furnished. A proviso has been added: Registrar may call for proof of title only where there is reasonable doubt about the accuracy/veracity of statements or documents filed.

 

This article was originally authored by Mr. Kunal Tandon and Ms. Kanika Jain during their tenure at Tandon & Co. Please note that Tandon & Co. has since been merged with Aretha Legal through its Partner, Ms. Aanchal Tandon.