By Aman Tolwani
The right to trademark is a common law right. An owner of trademark can always protect such right independent of any statutory provision.[i]
In India the first enactment on the subject of trademark was the Trademarks Act, 1940 (Act V of 1940). The courts have however always kept in mind the independent nature of rights in trademark. [ii] In Consolidated food corporation v Branden and Co private Ltd, the Bombay High Court has held:[iii] “a trader acquires a right of property in distinctive mark merely by using it upon or in connection with his good irrespective of the length of such user and the extent of his trade”.[iv]
In the context of globalisation, the 1999 Act was enacted and came to be known as the Trademark Act, 1999. After almost 18 years on 6th March 2017 the new trademark rules were introduced, the changes were long overdue. The new Rules have made the procedure for the prosecution of the Trademark in India a little bit less confusing. There is a special focus in the Rules to make Indian Trademark Office, a paperless Office.[v] Before the introduction of 2017 rules the method of filing of a Trademark was a bit hasty procedure, tons of forms were to be filed before a trademark is to be registered. With the introduction of new rules the number of forms which are to be filed are considerably reduced from 74 to 08. That means the process became less time consuming. The move to reduce Forms will certainly make the process for a laymen little bit less confusing. The forms available for the online filing are very much interactive in nature and a person with limited knowledge can certainly file an application for the registration of trademark without any help of a professional. [vi]
Salient feature of the 2017 Rules
The introduction of new rules of 2017 brought some of the major changes in the Trademarks Act, the major changes are discussed below:
Non-Conventional Mark (Sound Mark):
The introduction of 2017 Trade Mark Rules gave a sigh of relief to many users who have been waiting to get that sound mark registered under the Trademarks Act. There is a reason why Sound mark was not registered earlier as a trademark because they does not fall under the catogery of conventional mark. Trademark has been defined under section 2 (1)(zb) of the Act, as any mark which is distinctive, i.e. such as capable of distinguishing goods and services of one undertaking from another, and capable of being represented graphically. The definition thus, lays down two broad criteria that a mark has to satisfy in order to become a trademark. The definition of mark is an inclusive one, and therefore non-conventional marks can very well fit into the ambit of trademark if they satisfy the criteria of both distinctiveness and graphical representability.[vii]
The second problem is the graphical representability of the mark to be registered, especially in case of sound mark. Before the addition of sound mark as a trademark a few sound marks were still awarded as a registered trademark like “The MGM Lion” sound, “the 20th Centuary Fox FanFare” sound among some a few notables ones were denied their sound mark registration as well like Harley Davidson sound “Potato-Potato-Potato”.
For a sound mark to get registered it shall be uniquely identify the commercial origin of the product or service. Sounds marks were accepted in India under Rules of 2002 but same were not specifically mentioned anywhere under the Rules. The new Rules of 2017, have now specifically mentioned the procedure for filing a sound mark Under Rule 26 (5) of 2017 Rules.[viii] The new Rules have an express provision for filing applications of sound marks which must be submitted in an MP3 format, not exceeding 30 seconds in length. This is also to be accompanied with a graphical representation of the sound notations. In this regard, the definition of “graphical representation” has also been revised to include representation in digitized form.
Counterstatement filed in response to Notice of Opposition available online obviates its official service requirement:
The Opposition proceeding under the Rules 50 to 52 of 2002, had provisions identified with the expansion of time however the same are presently discarded, under the new Rules of 2017. There are no provisions identified with the augmentation of time for recording evidences in the Opposition proceedings consequently if a gathering to the proceeding does not record evidences or neglected to insinuate the Registrar that he wishes to depend on the reports as of now documented, inside stipulated day and age gave under the Rules 45 to 47 of new Rules of 2017, at that point it will be regarded that he has surrendered his application/Opposition.
The prerequisite of authority administration of the Notice of Opposition (NOP) by the Trade Marks Office now stands explicitly abstained from in those situations where a Counter explanation has just been documented by the candidate in light of the NOP as accessible on the authority online records. This blocks the excess of administration of the NOP in this way facilitating opposition proceedings in such cases.
Limitation as to seeking adjournments:
The 2017 Rules have are done with the provision of extensions in relating to evidences in support of opposition/application for the speedy disposal of opposition proceedings. It a special focus on the speedy redressal of disputes among the parties to a dispute for trademark, hence under the new Rules (rule 50 of 2017), it is mentioned that, no party shall be given more than two adjournment and each adjournment will not be more than thirty days. This in turn will help in speedy disposal of the oppositions which usually had a lengthy and time consuming process.
Removal of fee for additional classes while filing application recordal of assignment in a multiclass application:
As per new Rules(2017), Official fee for filing recordal of assignment in a multi class application will bear fee for only one class and fee for additional class which was required to be paid under old Rules of 2002 is now not applicable.
For example, if a trademark is registered under 5 classes through a multiclass application and same is assigned by the original owner. The Assignee in this case requires filing application for the recordal of assignment to enter his name as the owner of the trademark in Register. As per new Rules of 2017, the Assignee has to pay a fee of Rupees 10000 only and not for additional classes as happened earlier under Rules of 2002.
The Registered proprietors (Trademark users) can now file renewal requests within one year before the date of expiration as opposed to six months which was the earlier position (2002 Rules). As per the earlier Rules of 2002, a registered trademark becomes due for renewal six months before the expiry of the trademark. Now under new Rules of 2017, a trademark becomes due for renewal before one year from the date of expiry of renewal. Now there is an opportunity of one year to file a renewal for the registered trademark without any surcharges. Therefore as per new Rules, a renewal can be filed for a trademark from the beginning of 10th year of registration of a trademark and will be valid till the expiration of 10th year. Although the fee for the renewal of Trademark is also doubled, i.e. under the new Rules fee has increased subsequently from Rupees 5000 per class to Rupees 10000 per class.
Procedure for recognition of a well-known trademark:
The provisions for determining and declaring a trademark as a “well-known” have been incorporated in the new Rules (2017). More particularly, a proprietor can now submit a request to the Trademarks Office along with a statement of case and relevant evidence, which support the claim of the mark’s well-known status. The official fee for such a request has been fixed at Rupees 100,000 (approx. USD 1500). Under well known mark such marks are included which are common in public at large, for example the ‘M’ of Mac’Donalds, it’s a well known Trademark or the half eaten apple on the back of an Apple iPhone. As per the new Rule (124 of 2017), until now, a trademark can be recognized as a well-known trademark by a court in a proceeding related to trademark infringement. An owner of trademark can file an application to this effect along with all the evidences and documents on which the Applicant wants to rely in support of his claim. The Registrar on acceptance of a trademark as a well-known trademark will publish it in Trademark Journal.
Consideration of Communication through email as official communication:
As per the new Rules, Indian Trademark Office has also introduced email communication as the official mode of communication. For the same, an Applicant/Agent has to provide an email address at the time of filing of an application and all the official communication will be sent to the on that email. The deadline to respond to the Official communication will be counted from the date of communication of email to the Applicant/Agent. This is also a step in the direction of making Indian Trademark Office a paperless office as an Applicant can also file replies to the examination report and other communication from Indian Trademark Office through online portal of Indian Trademark Office. In order to promote a rather paperless system in India with the Digital India campaign and disincentivize dependency on paper, any physical filing of an application or document with the Trade Marks Office shall entail an additional fee of approximately 10% and in some cases thus, the electronic mode of filing and correspondence will be the call of this era.
Change in Official fee with special focus on popularizing online filing:
The most obvious change brought under the new Rules is the generous increment in the official charge for recording structures and applications wherever pertinent, for example, on account of documenting of exchange check applications (125% expansion), ask for restorations (80% expansion). In any case, a significant discount for Individuals/Startups and little Enterprises has been given to empower and encourage them in securing their brands.
The new Rules of 2017, promotes the online filing and making Indian Trademark Office a paperless office hence there is a discount of 10% on all the online filing in comparison to the over the counter filing. The fee for the filing a new trademark is also categorized on the basis of the type of Applicant. Government of India’s special initiative for
the start-ups is also given importance and hence the fee for small and medium enterprises and startups, is significantly less than that of Corporate.[ix]
Reduction in Number of Forms:
In the Trademark Rules, 2002 there were 75 different forms for the various procedures relating to the trademark registration and prosecution. It includes different types of trademark application, application for the post registration procedures etc. Whereas in the Trademark Rules 2017, the numbers of forms are reduced to mere 8 types and are divided according to the procedures for which a Form is to be filed. This move to reduce Forms certainly did made the process for a laymen little bit less confusing. The forms available for the online filing are very much interactive in nature and a person with limited knowledge can certainly file an application for the registration of trademark without any help of a professional. The categories of forms after the amendment are as mentioned below:[x]
|1||TM-A||Application for the registration of trademarks of different categories;|
|2||TM-M||Application/Request for miscellaneous functions in respect of a trademark Application/opposition/rectification under the Trade Marks Act;|
|3||TM-C||Request related to copyright search under rule 23(3) of The Trade Marks Rules, 2017;|
|4||TM-O||Notice of Opposition/application for ratification of the of the registrar by cancelling or varying registration of a trade mark/ counter statement/ Request to refuse or invalidate a trade mark;|
|5||TM-R||Application for renewal /restoration of Trademark;|
|6||TM-P||Applications for the post registration changes in trademark|
|7||TM-U||Application for the Registration/Cancellation/Variation of registered user and notice of intention to intervene in the proceedings in cancellation/variation.|
|8||TM-G||Application for the registration as trademark agents.|
These 8 forms made the process of filing a trademark or renewal or cancellation or prosecution, a lot easier than it was before, the earlier process was a hasty one, but with the reduction in number of forms have certainly made the process easy and time saving for a layman.
Allowance of Video Conferencing for Hearings
The provision dealing with hearings (Rule 111) in the 2002 Rules, does not refer to any elements of video conferencing, while the relevant part of Rule 115 (2017 Rules) reads as follows:
“Provide that the hearing may also be held through video-conferencing or through any other audio-visual communication devices and in such cases the hearing shall be deemed to have taken place at the appropriate office.”[xi]
Trademark Rules then and now
The Trademarks Act was officially introduced in the year 1999, and after 3 years of it’s inceptions the Trademark Rules (2002) were brought into picture.
The said rules provided guidelines for the filing of Trademarks (A hasty procedure which was proved) it’s renewal and cancellation, the kind of marks that can be registered and many other things.
The said process was the only set of rules towards guiding of trademark related matters. But the said rules were not able to keep the pace with the advancements in ever changing technology, need arose for the amendments in the said rules for making it more user friendly and less time consuming.
On March 6th 2017 the new trademark rules were officially introduced, which provided relaxations along with a few not so adorable changes as some may contest. The said rules reduced the number of forms to be filled from 74 to a minimum of 08, video conferencing is introduced, along with it the impact of digitization could be seen in the new Rules as well, email facility has been added, forms will now be filled online as well also the fees for start up has been kept low so as to let them promote their brand. A slight change as well the price of filing form offline has been increased by a 125%, well that’s also so as to online filing of forms can be promoted, which is considerably less costly as compared to filing form offline.
Also one of the important addition is the introduction of non-conventional mark as a trade mark (although few have been given trademark prior to this amendment), sound mark can now be registered as a trademark, all the proprietor has to do is record a 30 second clip of the said Mp3 and submit it for further checking, this in turn is definitely going to help many of the fellow musicians to get their sound track registered.
All said and done, the new trademark rules brought various good changes to the Trademarks Act, a lot of improvement from the 2002 rules, introduction of non-conventional marks as trademark is a big step towards broadening the reach of Trademarks Act. In time maybe more non-conventional mark will come within the ambit of Trademarks Act.
The process that is made easy will sure going to help a lot of fellow member proprietors in getting their marks registered, indeed it is a great addition to the Trademarks Act, 1999.
[i] Avinash Shivande, Intellectual Property Manual (LexisNexis 2004)
[ii] Avinash Shivande, Intellectual Property Manual (LexisNexis 2004)
[iii] MANU/MH/0231/1960 Consolidated Foods Corporation vs. Brandon and Co. Private Ltd (23.08.1960 – BOMHC)
[v] Singh & Associates, India: Analysis Of New Indian Trademark Rules 2017, on Trademark Rules 2017 http://www.mondaq.com/india/x/587402/Trademark/Analysis+Of+New+Indian+Trademark+Rules+2017 (last undated on April 21, 2017)
[vi] Singh & Associates, India: Analysis Of New Indian Trademark Rules 2017, on Trademark Rules 2017 http://www.mondaq.com/india/x/587402/Trademark/Analysis+Of+New+Indian+Trademark+Rules+2017 (last undated on April 21, 2017)
[vii] Arka Majumdar, Shubhojit Sadhu and Sunandan Majumdar, The Requirment of Graphical Representability for Non-Conventional Trademarks, (NUJS) Journal of Intellectual Property Rights, Vol 11, September 2006
[viii] Singh & Associates, India: Analysis Of New Indian Trademark Rules 2017, on Trademark Rules 2017 http://www.mondaq.com/india/x/587402/Trademark/Analysis+Of+New+Indian+Trademark+Rules+2017 (last undated on April 21, 2017)
[ix] Ibid., p 3
[x] Ibid., p 3
[xi] Government of India Ministry of Commerce and Industry (March 6, 2017)
Image source : Photo by Iñaki del Olmo on Unsplash. Available at : https://unsplash.com/photos/NIJuEQw0RKg