Apr 01, 2017

Trade Marks Rules, 2017

Some of the key changes introduced by the Trademark Rules, 2017 (‘TM Rules 2017’), which have come into force on March 6, 2017 and replace the erstwhile Trademark Rules, 2002 (‘TM Rules 2002’), are as follows:i. For the first time, a mechanism has been introduced enabling brand owners to file an application with the Registrar for determination of a trademark as ‘well-known’;ii. TM Rules 2017 specifically provide for the registration of a sound mark;iii. Definition of ‘opposition’ has been amended to include opposition not only in relation to a pending trademark application, but also opposition to alteration of a registered trademark and opposition to the grant of protection to an international registration designating India;iv. Where use of a trademark is claimed prior to the date of application, the applicant is required to file an affidavit testifying such use along with supporting documents;v. Official fees for trademark registration have been increased substantially; however, concessions have been provided to small enterprises, startups and individuals, and to e-filings;vi. Expedited processing of a trademark application has been provided for, including examination and other proceedings such as processing responses to the examination report, show cause/hearings, publications, and oppositions;vii. Video conferencing is provided for, to enable hearings and email has been permitted as a means for service of documents ;viii. The number of adjournments that a party can ask for has been limited to a maximum of two and the adjournment period has also been limited to a maximum of 30 days; andix. New provisions have been included for trademark registration through the Madrid Protocol in relation to the Madrid Agreement Concerning the International Registration of Marks.

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