India’s Intellectual Property Office updates trade mark rules in March 2017

Tuesday 14th March 2017

The Indian Office of the Registrar of Trade Marks (the Office) has published amended Trade Mark Rules 2017 which came into effect on 6 March 2017.  These new rules amend the Trade Mark Rules 2002 and seek to make general and practical changes to the Indian trade mark system and improve India’s intellectual property regime overall.

In particular, the rules seek to support the objectives of ‘Digital India’, encouraging e-fillings, e-registration certificates and streamlined trade mark prosecution procedures. Digital India is the Government of India’s programme that seeks to transform India into a digitally empowered society and knowledge economy.

The major areas of change under the new rules include –

  1. Applicants can apply for trade marks under two categories: individual, start-up or small enterprise and others, attracting different fees for both categories.
  2. Applicants must have a valid email address as well as an address for service in India in order to receive official correspondence electronically. Trade mark agents are required to provide a valid mobile number registered in India.
  3. Applicants may receive preliminary advice on the registrability of their trade mark from the Registrar, provided the payment fee is met.
  4. Streamlined trade mark application forms and a discounted filing fee for online, rather than physical, filings.
  5. Protection can be sought for sound trade marks
  6. An application claiming prior use to the date of filing the application will need to be supported by evidence of such use.
  7. Upon payment of a fee, the trade mark prosecution procedure may be expedited. The processes can be expedited at each step of the prosecution procedure.  
  8. A renewal application can be filed one year prior to the expiration date of the trade mark rather than six months prior under the old rules.
  9. Any person, upon the payment of a large filing fee, can designate their trade mark as a ‘well-known trade mark’ provided there is supporting evidence.

Finally, and perhaps the most notable change under the new rules, is a significant increase in fees at the Office, in some areas up to 125%. Fees for a standard trade mark application are over 100% above the same fee under the 2002 rules. An attempt, however, has been made to mitigate the fee increases in some areas such as a 10% discount for online filings and a 50% discount for start-up and small enterprise trade mark applications.

We will keep you updated of any further developments as the new rules play out.

If you have any queries regarding the above, please contact us today. 

This article was written with the assistance of Vicky Mullins. 

This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.

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