Trademark Rules Comparison - I

Trademark Rules Comparison - I

Comparative Analysis of Definitions under Trademark Rules, 2002 and Trademark Rules, 2015

The comparison provided is changes between the Trademark Rules, 2002 and draft Trademark Rules, 2015, which is yet to notified.

			TM Rules, 2002				TM Rules, 2015
Rule	Sub-Rule	Cl.	Content	Rule	Sub-Rule	Cl.	Content	Changes
1			Short title and commencement.	1			Short title and commencement.
	1		These rules may be called the Trade Marks Rules, 2001.		1		These rules may be called the Trade Marks Rules, 2015.	No Change
	2		They shall come into force on the date on which the Act comes into force.		2		They shall come into force on the date of their final publication in the Official Gazette.	No Change
2			Definitions	2			Definitions
	1	a	"Act" means the Trade Marks Act, 1999 (47 of 1999);		1	a	Act means the Trade Marks Act, 1999 (47 of 1999);	No Change
		b	agent means a person authorised to act under section 145 of the Act;			b	agent means a person authorised to act under section 145 of the Act;	No Change
		c	"application for registration of a trade mark" includes the trade mark for goods or services contained in it;			c	"application for registration of a trade mark" includes the trade mark for goods or services contained in it;	No Change
		d	"appropriate office of the Trade Marks Registry" means the relevant office of the Trade Marks Registry as specified in rule 4;			d	"appropriate office of the Trade Marks Registry" means the relevant office of the Trade Marks Registry as specified in rule 4;	No Change
		Nil	Nil			e	"Authenticated" means authentication of any electronic record by means of "digital signature" as defined in the information Technology Act, 2000;	Inserted
		e	"class fee" means the fee prescribed for the filing of an application for registration of a trademark in a particular class;			f	"class fee" means the fee prescribed for the filing of an application for registration of a trademark in a particular class;	No Change
		f	"convention country" means a country notified as such under sub-section (1) of section 154;			g	"convention country" means a country or group of countries or union of countries or Inter-Governmental organizations of countries declared as such under sub-section (1) of Section 154;	Now inter-governmental organization are also considered as conventional country
		g	"convention application" means an application for registration of a trade mark made by virtue of section 154;			h	"convention application" means an application for registration of a trade mark made by virtue of Section 154;	No Change
		h	"divisional application" means- (i) an application containing a request for the division of goods or services in a class for the registration of a trade mark; or (ii). a divided application made by the division of a single initial application for the registration of a trade mark for separate classes of goods or services;			i	"divisional application" means an application containing a request for the division of an application made under sub-section 2 of section 18 for the registration of a Trademark;	No Change
		i	"divisional fee" means fee prescribed in the First Schedule;			j	"divisional fee" means fee prescribed against entry number 62 in the First Schedule;	Specific Entry 62 prescribed
		j	"Form" means a form set forth in either the Second or the Third Schedule;			k	Form means a form set forth in either the Second or the Third Schedule;	No Change
		k	"graphical representation" means the representation of a trade mark for goods or services in paper form;			l	"graphical representation" means the representation of a trade mark for goods or services represented or capable of being represented in paper form and includes representation in digitized form;	Now graphical representation will include the digital format also rather than just only on paper
		l	"Journal" means the Trade Marks Journal referred to in rule 43;			m	"Journal" means the Trade Marks Journal made available at official website of Controller General of Patents, Designs and Trade Marks;	Journal means the TM Journal made available online by the TM Deptt.;
		m	"notified date" means the date on which these- rules come into force;			n	"notified date" means the date on which these rules come into force;	No Change
		n	"old law" means the Trade and Merchandise Marks Act, 1958 and rules made thereunder existing immediately before the commencement of the Act;			o	"old law" means the Trade and merchandise Marks Act, 1958 and rules made thereunder existing immediately before the commencement of the Act;	No Change
		o	"opposition" means an opposition to the registration of a trade mark or a collective mark or a certification trade mark, as the case may be;			p	opposition" includes an opposition to the registration of a trade mark or a collective mark or a certification trade mark, as the case may be;	No Change
		p	"principal place of business in India" means the relevant place in India as specified in rule 3;			q	"principal place of business in India" means the relevant place in India as specified in rule 3;	No Change
		q	"publish" means publish in the Trade Marks Journal;			r	"publish" means publish in the Trade Marks Journal or to make available on the official web site of Controller General of Patents, Designs and Trademarks;	Website is also included under the heading of publish
		r	"registered trade mark agent" means a trade marks agent whose name is actually on the register of trade marks agents maintained under rule 148;			s	"registered trade mark agent" means a trade marks agent whose name is actually on the register of trade marks agents maintained under rule 148;	No Change
		s	"renewal" means and includes renewal of a trade mark or a certification trade mark or collective mark, as the case may be;			t	"renewal" means and includes renewal of a trade mark or a certification trade mark or collective mark, as the case may be;	No Change
		t	"Schedule" means a schedule to these rules;			u	"Schedule" means a schedule to these rules;	No Change
		u	"section" means a section of the Act;			v	"section" means a section of the Act;	No Change
		v	"specification" means the designation of goods or services in respect of which a trade mark or a registered user of a trade mark is registered or proposed to be registered;			w	"speciflcation" means the designation of goods or services in respect of which a trade mark or a registered user of a trade mark is registered or proposed to be registered;	No Change
		w	All other words and expressions used but not defined in these rules buts defined in the Act or in the Geographical Indications Goods (Registration and Protection) Act, 1999 (48 of 1999), the Copyright Act, 1957 (14 of 1957) shall have the meanings respectively assigned to them in these Acts.			x	All other words and expressions used but not defined in these rules buts defined in the Act or in the Geographical Indications Goods (Registration and Protection) Act, 1999 (48 of 1999), the Copyright Act, 1957 (14 of 1957) shall have the meanings respectively assigned to them in these Acts.	No Change
	2		In these rules, except as otherwise indicated, a reference to a section is a reference to that section in the Act, a reference to a rule is a reference to that rule in these rules, a reference to a Schedule is a reference to that Schedule to these rules and a reference to a form is a reference to that form contained in the Second Schedule or the Third Schedule, as the case may be to these rules.		2		In these rules, except as otherwise indicated, a reference to a section is a reference to that section in the Act, a reference to a rule is a reference to that rule in these rules, a reference to a Schedule is a reference to that Schedule to these rules and a reference to a Form is a reference to that Form contained in the Second Schedule or the Third Schedule, as the case may be, to these rules.	No Change

First Examination Report for Design

First Examination Report for Design

It is for information to all the stakeholders that in order to facilitate faster processing of applications for registration of designs, First Examination Reports (FER) and subsequent office communications shall be communicated in the e-mail or digital address of the applicant / agent as mentioned in the address of service for respective design applications wherever available. This provision of sending First Examination Reports to applicant/ agent through e-mail would commence from 5th September, 2016. Therefore, all applicants/ agents are hereby requested to invariably provide e-mail address in the Address for Service in Application for registration of Design.

Source: www.ipindia.nic.in

Register as Trademark Facilitator for Start Ups

ENROLMENT OF REGISTERED TRADEMARK AGENTS AS 

FACILITATOR FOR START-UPS 

Trademark Department in order to facilitate the registration procedure and to give relaxation in fee to the Start-ups in India have initiated a scheme and have invited applications from Trademark Agents registered across India to enroll as facilitator for such scheme.

Trademark Agent may enroll themselves as the Facilitator. Please go through the link as follows:

http://www.ipindia.nic.in/iponew/Form_StartUps_TMR_03March2016.pdf

Register yourself as Trademark Facilitator.

Rule 147- Alarming situation for CS in proposed TM Rules

                 (on the letter head or send in the mail)

Additional Secretary to the Government,

Ministry of Commerce and Inustry,

Department of Industrial Policy and Promotion,

Udyog Bhawan, New Delhi – 110011

Sub.: Objections/suggestions to the proposed Trademark Rules, 2015 dated 17^th November, 2015.

Dear Sir/Madam,

This is in reference to the draft Trademark Rules, 2015 (“Draft Rules”), published by the Government of India and as shown on the website of Registrar of Patents and Trademark we would like to submit certain suggestions/observation to the said draft rules before your good office.

We are practicing as Company Secretaries and undertake the assignments for registration of trademarks on behalf of Public at Large. We also spread the knowledge and make people aware about their Intellectual Property Rights.

In reference to the draft Rules our Objections/Suggestions are as follows:

Rule 147: Exclusion of Company Secretaries to be qualified as Trademark Agent

We would like to submit before the Department that Government of India vide Standing Order bearing No. 1396, dated 23^rd March, 1985 (w.e.f. 6^th April, 1985) substituted Rule 148(iii) of the Trade and Merchandise Marks Rules, 1959, and inserted the provision that a Member of the Institute of Company Secretaries of India is also qualified to be registered as a trade marks agents.

Whereas, Rule 150 of the Trade Marks Rules, 2002, carried the same provisions and provides as follows:

“150. Qualifications for registration: Subject to the provisions of rule 151, a person shall be qualified to be registered as a trade marks agent if he:

(i)        is a citizen of India;

(ii)      is not less than 21 years of age;

(iii)  has passed the examination prescribed in rule 154 or is an Advocate within the meaning of the Advocates Act,1961 (25 of 1961) or is a Member of the Institute of Company Secretaries of India;

(iv)     is a graduate of any university in India or possess an equivalent qualification; and

(v)       is considered by the Registrar as a fit and proper person to be registered as a trade mark agent.”

However, in the proposed Rules the Member of the Institute of Company Secretaries of India are excluded from the provisions of qualification of Trademark Agents. Rule 147 of the Draft Rules provides as follows:

“147. Qualifications for registration: Subject to the provisions of rule 148, a person shall be qualified to be registered as a trade marks agent if he:

(i)        is a citizen of India;

(ii)      is not less than 21 years of age;

(iii)  is a graduate of any university in India or possesses an equivalent qualification and has passed the examination prescribed in rule 151 or is an Advocate within the meaning of the Advocates Act,1961 (25 of 1961);

(iv)     is considered by the Registrar as a fit and proper person to be registered as a trade mark agent.”

The members of the Institute of Company Secretaries of India (“the ICSI”) are actively participating in the various fields of law very effectively and are being recognized by the Government of India and public at large as efficient legal representatives before legal authorities such as:

(i)                 Company Law Board.

(ii)               National Company Law Tribunal.

(iii)             Competition Commission of India & Competition

(iv)             Appellate Tribunal.

(v)               Securities Appellate Tribunal.

(vi)             Registrar of Companies.

(vii)           Consumer Forums.

(viii)         Telecom Disputes Settlement and Appellate Tribunal.

(ix)             Tax Authorities.

Company Secretaries are well efficient to handle Trademark registration and representation before the Trademark Authority.  Since, 1985, after getting recognition by the Government of India are actively participating for Trademark Registration and providing services to the public at large.

Our Recommendation:

We request your good office to include the Company Secretaries within the ambit of Rule 147(iii) to provide better Trademark Registration services to the public at large.

We do hereby submit our observation/recommendation on the Draft Rules for your kind perusal. We shall be glad to provide any other detail as required by your good office.

Thanks and Regards

For ..(Name of Firm)….

Signature

Date:

Place: 

Trademark - Impact of increase in fee

Trademark after fee increase - a Legal Luxury

India is a developing country and still people are unaware of the Rights related with the Intellectual properties. Once considered as the legal luxury, Trademark is now considered as the basic requirement of the Business in India. In Indian business scenario importance of the trademark is increasing but still the Small and Medium Scale entrepreneurs are yet to be aware of the importance of Trademark in business.

 As per the draft Rules the Government has proposed to increase the fee by twice for trademark registration and for physical filing the applicant is required to pay Rs. 800/- extra. Government has recently increase the trademark registration fee from Rs. 3,500/- to Rs. 4,000/-[1].

Sudden rise in the fee by double will cause negative impact in public at large and some grave consequences will be as follows:

a.      Burden of Extra fee:

Increase in fee by double (existing Rs. 4,000/- per Trademark to Rs. 8,000/- per Trademark) will cause an extra burden on public at large who are interested in registration of their mark with the Trademark Registry.

b.      Downfall in number of Registration:

Indian Trademark registry has received 202,444 Trademark Applications in comparison to the 1,880,000 Trademark Application received by the China in the year 2013.[2] In BRICS countries India stands at second position after the China, however, in international scenario India is much behind China.

This sudden increase in fee by double will demoralize the intention of people to get their mark registered.

c.      Extra burden to SME

In the diversified economy of India SME are growing rapidly and it is the obligation of government to give extra benefits and relaxation to the SME’s. A large number of small scale organizations cannot pay the increase fee i.e. Rs. 8,000/- due to which SME’s not only stop applying for registration of their mark but also fail to get their right on their hard earned Intellectual Property Right.

d.      Depriving public from getting registration

Increase in fee will deprive a mazor section of society who cannot pay Rs. 8,800/-to the Government for the registration of their mark. Entrepreneur who are at the starting stage of business will hesitate to file the trademark application due to the huge cost involved.

          

It will be in the interest of the Public that Government take the increase in fee back and do not implement the same. Increase in cost will make the trademark a legal luxury.

---

[1] As per Notice bearing number CG/PublicNotice/2014-15/51 dated 07th August, 2014 and consequent to the notification in the official gazette of India issued by the Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) dated 01st August, 2014 (G.S.R. 523(E)).

[2] WIPO statistics database, October 2014.

Awareness between kid about IPR

Kids of today are the visionaries of tomorrow. Government has taken a great step to make kids aware about the Intellectual Property Rights. Government has launched comic series to give basic knowledge about intellectual properties to kids.

Go through the link for comic strips:

Trademark
Kids Corner

Online Design Application

Online Design Application

Indian government is focusing towards the importance of Intellectual Property and requirement of efficient infrastructure to provide fast and transparent services to the public at large. In the recent, Government has taken some big steps which were not only long awaited but also most required. In last three years India witnessed a huge change in the Intellectual Property Laws and procedures thereto.

Specially, government has taken leap steps in field of Designs. As the design is the base of manufacturing industry. A design can be understood by the complete shape of any product manufactured at industrial scale. Designs due to their specific nature cannot fall under Trademark Act or Copyright Act, however, in order to protect the uniqueness of Design, in India Design Act was enacted.

Registration of design is a tedious process as due to specific requirement and technicality in the design application the applicant should possess the technical capabilities for the same. Design application were filed in India in physical mode and the application were made to the Kolkata office where all the design were examined and then registration were granted.

However, Government of India, vide Public Notice dated 09^th March, 2015 have initiated the online filing of design application. This will cause the speedy disposal of the design application and public at large can track their application status easily.

For our services or information please write at iprsmiths@gmail.com. 

Online Design Search

Design - a concept which changes the future of a product and primarily attracts the consumers. Companies are investing a lot of time and money in design and Indian Government is also seriously viewing the Intellectual Property Rights involved with the design of a product. Controller of Design and Patent on 26^th January,  2015 have launched dynamic search utility for search of design.

Now the design may be searched online. However, previously a person had to make payment to the department for making search of the design of a product and department make the search on behalf of the person itself and use to issue a search report. But now with the initiation of the dynamic search utility facility a person may make the search of the design online without making payment of any fee.

Please go through the link for the dynamic search utility.

Happy Republic Day!!!

Appointment of 100 Trademark Examiner on Contract Basis

Trademark Examiner

Trademark Department in order to speedy disposal of the Trademark pendency have proposed to make appointment of 100 Trademark Examiner on contractual basis for one year. For more information and eligibility please go through:

Vacancy Trademark Examiner

Please verify the information with the Trademark Department before making application. This content is provided for information purposes only.

Design (Amendment) Rules, 2014 - An overview

Government of India keeping the requirement of Small Scale Industry in country have notified the amendment in the Designs Rules and provided certain provisions for Small Scale Industries. Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) on 31^st December, 2014 notified the Design (Amendments) Rules, 2014 w.e.f. 30.12.2014. The amendment includes certain major changes as:

a.       Fee structure for filing of design application as well as other proceedings under the Designs Act in the First as well as Fourth Schedule of the amended rules have been revised.

b.      Applicants for designs have been categorised separately as “natural person” and “other than natural person(s)”. The second category of applicants i.e. “other than natural person(s)” has been further divided into two sub-categories viz. “small entity” and “others except small entity”. The fees for “small entity” have been fixed in between the fees for a natural person and for all persons other than natural persons (except a small entity).The criteria for “small entity have been elaborated in the amended rules.

c.       Revised Form 1 to 23 have been introduced in the Second Schedule.

d.      Government introduced Form-24 in the rules, which is to be accompanied every new application. For subsequent documents for which a fee has been specified and for which the fee applicable for a small entity is claimed, it should be ensured that Form-24 is filed at least once against the application number. In case of any change of status the applicant(s) such that the benefit derived by the applicant due to its claimed status does not remain valid or applicable, it will be the responsibility of the applicant(s) to inform the Official about the said change.

e.       In case an application processed by a natural person is fully or partly transferred to a person other than a natural person, the difference, if any, in the scale of fees between the fees charged from a natural person and the fees chargeable from the person other than natural person in the same matter shall be paid by the new applicant with the request for transfer.

f.        In case an application processed by a small entity is fully or partly transferred to a person other than a natural person (except a small entity), the difference, if any, in the scale of fees between the fees charged from the small entity and the fees chargeable from the person other than natural person (except a small entity) in the same matter shall be paid by the new applicant with the request made for such transfer.

For copy of notification please go through: Design (Amendment) Rules, 2014.