New Trademark Rules 2017
In 2015 news about fee hike for Trademark application surfaced along with other amendments, but in 2017 finally Trademarks
Rules are now amended and are notified on 6th March 2017. Let us understand-what are the major changes that are
being done in Trademark Rules 2017.
1) Division in Applicant category
Initially when any Trademark application was filed, the applicant was required to specify its details but there was no implication
over the fees based on applicant’s legal status. But now the applicant’s are also categorized in accordance to
their legal status. For individual, start-ups and SME’s the fee for e-filing has been increased to Rs 4500 per
class, and for entities like private limited company, Limited liability partnerships and any other form of body
corporate the fee has been increased to Rs 9000 per class. The fee hike for the body-corporates might prove a
setback for startups and other SME’s as you can only claim the benefit of fee concession in case you have a startup
certification obtained from inter-ministerial board or certificate of SME from ministry of MSME, which generally startups do not have.
2) Reduction in number of forms:
In the new Trademark rules the number of forms has been drastically reduced to 8 from 78, and single form has been supplied
for multiple actions, for example initially there was 1 form prescribed for Trademark application in India TM-1
and another form was required for filing application in multiple classes, convention application and so on. Now
a single form TM-A has been introduced for number of purposes. Namely TM-A can be used for Trademarks application,Convention
application,Multiclass convention application,Multiclass, Series mark in a class or multiclass, Series mark from
convention country in class or multiclass and Collective mark etc.
3) Claim of Usage:
Initially the trademark application TM-1 applicable earlier, the applicant was allowed to claim usage even before the date of
filing of application and it was the prerogative of the Examiner to call for affidavit of usage. But now this
has been amended and in case the applicant is willing to claim usage before the date of filing of trademark application
in the new form it is mandatory to attach the affidavit of usage to substantiate their claim on user details
as filed in new form TM-A. So, now it is advisable to file a Trademark application as soon as you intend to use
it. As preparation of affidavit of usage requires lot of evidences and statement of facts making it a time consuming and difficult process.
4) Serving of documents:
Earlier the applicant was allowed to file for reply of examination report or file for counter statement once he/she actually
receives the physical copy of the notices. But now in case the examination report or notice of opposition is
now uploaded on ipindia.nic.in website and is available online, the applicant need not to wait for the serving
of document and may proceed to file a reply. This has in a way reduced the proceeding time of trademark examination
process and opposition proceedings, but also has curtailed the freedom of applicant to claim the extension against
the plea that he/she was not constructively aware of such notice and the Examiner shall grant him the leave to
file for the replies or trademark objection reply at later stage. But we believe that now this plea will not
hold good and strict deadlines will be followed.
5) Reduction in number of adjournments:
Initially, there was no bar on adjournments but now the parties need to request for the adjournment along with prescribed fees
and it is further notified that no party shall be given more than 2 adjournments and each adjournment shall not
be more than 30 days. This will surely expedite the process of Trademark proceedings.
6) Change in Renewal filing:
Earlier the applicant was allowed to file for a renewal of a trademark application only 6 months before the expiry date, however,
this has now been changed to 1 year before the expiry which gives much time for the applicant to renew the Trademark
7) Recognition as a Well-known mark:
In previous Trademark legislation, well known marks were chosen by the court but in Trademark rules 2017, anyone can apply
for recognition of their brand as well known under rule 124 by payment of Rs 1 lakh along with the supporting
documents, evidences and statements of case.
8) Correction in application will cost more:
Initially the applicant was able to correct any clerical error in application by way of filing of TM-16 form, however, now the
fee for any correction request has been increased from 500 Rs to 900 Rs. So be careful about filing of Trademark
Over all the Trademark rules are modified in tune to Patent rules 2015, like segregation of applicant category and applicable
fees also an effort is made to make the process of registration fast, but a steep hike in government fees for
corporate may prove to difficult for startups to go for registration of brand name on the name of the company.This
steep increase in fees will also make it riskier for individuals/companies to get their Trademark registered
by novice lawyers or CS, its crucial to hire an expert attorney to get the job done.