BY-TRADEMARK TEAM AT

INTELLOCOPIA IP SERVICES

HIGHLIGHTS- TRADEMARKRULES, 2017

BY-TRADEMARK TEAM AT

INTELLOCOPIA IP SERVICES

07-Mar-17 1

TRADEMARK RULES, 2017 The DIPP (Department of Industrial Policy and

Promotion) has recently notified the amended TrademarkRules, 2017. The notification was released on 06th March,2017 amidst intense speculation in the IP fraternity. Theamended rules seek to simplify the process of trademarkfiling and prosecution.

07-Mar-17 2

The DIPP (Department of Industrial Policy andPromotion) has recently notified the amended TrademarkRules, 2017. The notification was released on 06th March,2017 amidst intense speculation in the IP fraternity. Theamended rules seek to simplify the process of trademarkfiling and prosecution.

KEY HIGHLIGHTS OF THE AMENDED RULES

Official Fees for Application for Registration of aTrademark/ Collective/Certification/ Series Marks :There has been a significant rise in the official fees forapplication for registration of a trademark. In case theapplicant is an Individual, Startup or a Small Enterprise theofficial fees payable are Rs 5,000 for physical filing per markper class. However, for the above mentioned categories theofficial fee is Rs. 4500, in case the mark is filed online. Therelevant form for the afore mentioned filing is TM-A.

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Official Fees for Application for Registration of aTrademark/ Collective/Certification/ Series Marks :There has been a significant rise in the official fees forapplication for registration of a trademark. In case theapplicant is an Individual, Startup or a Small Enterprise theofficial fees payable are Rs 5,000 for physical filing per markper class. However, for the above mentioned categories theofficial fee is Rs. 4500, in case the mark is filed online. Therelevant form for the afore mentioned filing is TM-A.

Official Fee for Notice of Opposition :The official fee for filing a notice of opposition are Rs.3000. The applicant has to file form TM-O giving his intentof opposition. Official Fee for Renewal :

The official fee for renewal have witnessed a steep hike. Thefees applicable for renewal are now Rs. 10,000 per mark perclass. The Applicant has to file TM-R seeking for renewal ofhis mark. Official Fee for Assignment:

The official fee to register a subsequent proprietor in caseof an assignment or transmission is Rs. 10,000. TheApplicant has to file TM-P for such an action.

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Official Fee for Notice of Opposition :The official fee for filing a notice of opposition are Rs.3000. The applicant has to file form TM-O giving his intentof opposition. Official Fee for Renewal :

The official fee for renewal have witnessed a steep hike. Thefees applicable for renewal are now Rs. 10,000 per mark perclass. The Applicant has to file TM-R seeking for renewal ofhis mark. Official Fee for Assignment:

The official fee to register a subsequent proprietor in caseof an assignment or transmission is Rs. 10,000. TheApplicant has to file TM-P for such an action.

Official Fee for Assignment/ Transmission ofTrademark:To add, cancel or vary the details of a registered user, theApplicant has to pay official fees of Rs. 5000. The applicanthas to file TM-U for the same. Issuance of Search certificate, Duplicate and Certified

Registration Certificate:An applicant has to file TM-C requesting for a searchcertificate as mentioned in Rule 22 (1) of the TrademarksRules, 2017. The applicant has to pay Rs. 10,000 for such acertificate.

…(CONTD)07-Mar-17 5

Official Fee for Assignment/ Transmission ofTrademark:To add, cancel or vary the details of a registered user, theApplicant has to pay official fees of Rs. 5000. The applicanthas to file TM-U for the same. Issuance of Search certificate, Duplicate and Certified

Registration Certificate:An applicant has to file TM-C requesting for a searchcertificate as mentioned in Rule 22 (1) of the TrademarksRules, 2017. The applicant has to pay Rs. 10,000 for such acertificate.

…(CONTD)

…(CONTD)

An Applicant has to file TM-M in case ofrequirement of a duplicate registration certificate,Certified Copy of the Registration Certificate,Extension of time, inspection of document,Particulars of advertisement to registrar, or seekinggrounds of decision of Registrar. An official fee ofRs. 1000 has to be paid in respect of theserequirements

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An Applicant has to file TM-M in case ofrequirement of a duplicate registration certificate,Certified Copy of the Registration Certificate,Extension of time, inspection of document,Particulars of advertisement to registrar, or seekinggrounds of decision of Registrar. An official fee ofRs. 1000 has to be paid in respect of theserequirements

Official Fee for Division of Application :An applicant has to file TM-M for division of anapplication. An official fee of Rs. 1800 has to beincurred for such division. Expedited Process:

In case an applicant is desirous for an expedited processhe can proceed to file TM-M. An official fee of Rs.20,000 needs to be paid in this regard only when theapplicant is an individual, start up or a small enterprise.In other cases the official fee is Rs. 40,000.It is importantto note that any kind of physical filing is not permittedby the trademarks Registry for this particular action.

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Official Fee for Division of Application :An applicant has to file TM-M for division of anapplication. An official fee of Rs. 1800 has to beincurred for such division. Expedited Process:

In case an applicant is desirous for an expedited processhe can proceed to file TM-M. An official fee of Rs.20,000 needs to be paid in this regard only when theapplicant is an individual, start up or a small enterprise.In other cases the official fee is Rs. 40,000.It is importantto note that any kind of physical filing is not permittedby the trademarks Registry for this particular action.

Well Known Marks:An applicant has to file TM-M to include a mark in the listof the ‘well –known marks’ and pay an official fee of Rs.1,00,000 for the same. However, no physical filing ispermitted by the Trademarks Registry for this particularaction. Further, according rule 124 (4), the Registrar mayinvite objections from the general public and give a timeperiod of 30 days to file the same.

Hearing through Video Conferencing:The Trademark Registry has notified new rules with respectto hearings. As per the proviso to Rule 115 , hearings cannow be held through video conferencing or through otheraudio visual devices. This is a welcoming change and hadbeen vouched for quite long by the IP fraternity.

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Well Known Marks:An applicant has to file TM-M to include a mark in the listof the ‘well –known marks’ and pay an official fee of Rs.1,00,000 for the same. However, no physical filing ispermitted by the Trademarks Registry for this particularaction. Further, according rule 124 (4), the Registrar mayinvite objections from the general public and give a timeperiod of 30 days to file the same.

Hearing through Video Conferencing:The Trademark Registry has notified new rules with respectto hearings. As per the proviso to Rule 115 , hearings cannow be held through video conferencing or through otheraudio visual devices. This is a welcoming change and hadbeen vouched for quite long by the IP fraternity.

Sound Mark Registration:A sound mark can now be registered by filing the same inMP3 format. Additionally, it is necessary to provide musicalnotes in the application. Discount on e- filing:

The Trademarks Registry has offered a 10% discount onofficial fees to encourage greater uptake on online filing ofapplications and forms. Adjournments :

As per Rule 50(2) of the amended Trademark Rules, 2002,an applicant can now request for only two adjournments.The same has to be communicated in form TM-Maccompanied by the prescribed fee, at least three days beforethe date of hearing and the Registrar.

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Sound Mark Registration:A sound mark can now be registered by filing the same inMP3 format. Additionally, it is necessary to provide musicalnotes in the application. Discount on e- filing:

The Trademarks Registry has offered a 10% discount onofficial fees to encourage greater uptake on online filing ofapplications and forms. Adjournments :

As per Rule 50(2) of the amended Trademark Rules, 2002,an applicant can now request for only two adjournments.The same has to be communicated in form TM-Maccompanied by the prescribed fee, at least three days beforethe date of hearing and the Registrar.

Service of Documents:According to Rule 18 of the Trademarks Act, 1999,the communication sent by the Trade MarksRegistry through emails will now be construed asvalid service.

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Service of Documents:According to Rule 18 of the Trademarks Act, 1999,the communication sent by the Trade MarksRegistry through emails will now be construed asvalid service.

DISCLAIMER

VIEWS EXPRESSED AND ERRORS, IF ANY ARE ATTRIBUTABLE TO THEAUTHOR –

IF YOU RELY ON THE ABOVE VIEWS WITHOUT A PERSONALIZED OPINION, AND HAVEBENEFITS, YOU ARE FREE TO KEEP IT TO YOURSELF WITHOUT EVEN ANACKNOWLEDGEMENT !!

IF YOU RELY ON THE ABOVE VIEWS, SOME OF IT MAY BE WRONG AND IF YOU SUFFERLOSES AND YOU SUE ME FOR NEGLIGENCE, I RESERVE NOT ONLY MY RIGHTS TORECOVER COSTS(!) BUT ALSO RAISE A NEW BILL ON YOU FOR RELYING UPON THESEVIEWS!!

THIS PRESENTATION IS PRIMARY MEANT FOR INSTRUCTIONAL USE.NOT FOR PUBLICATION.

VIEWS EXPRESSED AND ERRORS, IF ANY ARE ATTRIBUTABLE TO THEAUTHOR –

IF YOU RELY ON THE ABOVE VIEWS WITHOUT A PERSONALIZED OPINION, AND HAVEBENEFITS, YOU ARE FREE TO KEEP IT TO YOURSELF WITHOUT EVEN ANACKNOWLEDGEMENT !!

IF YOU RELY ON THE ABOVE VIEWS, SOME OF IT MAY BE WRONG AND IF YOU SUFFERLOSES AND YOU SUE ME FOR NEGLIGENCE, I RESERVE NOT ONLY MY RIGHTS TORECOVER COSTS(!) BUT ALSO RAISE A NEW BILL ON YOU FOR RELYING UPON THESEVIEWS!!

THIS PRESENTATION IS PRIMARY MEANT FOR INSTRUCTIONAL USE.NOT FOR PUBLICATION.

07-Mar-17 11

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Bangalore KolkataIntellocopia IP Services, Intellocopia IP Services,120(old.no.14), 3rd Floor, Flat No. 3C, Maa Tara1st Main, Dr. Rajkumar Road, Apartment, 56 Golaghata Road,1st Block, Rajajinagar, Bangalore-560010. Kolkata - 700048Cell: +919448085810, Ph: 08023521978 Ph:+919331819963e-mail: bhatta@ipcopia.comURL:http://www.ipcopia.com

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Offices At:

Bangalore KolkataIntellocopia IP Services, Intellocopia IP Services,120(old.no.14), 3rd Floor, Flat No. 3C, Maa Tara1st Main, Dr. Rajkumar Road, Apartment, 56 Golaghata Road,1st Block, Rajajinagar, Bangalore-560010. Kolkata - 700048Cell: +919448085810, Ph: 08023521978 Ph:+919331819963e-mail: bhatta@ipcopia.comURL:http://www.ipcopia.com

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