Increase in official fees for trademark applications and expedited examination

The Trademarks Rules 2002 under the Trademarks Act 1999 have been amended by the Trademarks (Amendment) Rules 2014, with effect from August 1 2014.

As per the notification published by the Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) in the Gazette of India dated August 1 2014, the Trademarks (Amendment) Rules have amended the official fees as follows:

• the fee for filing a trademark application has increased from Rs3,500 (approximately $60) to Rs4,000 (approximately $65); and

• the fee for requesting the expedited examination of a trademark application has increased from Rs12,500 (approximately $205) to Rs20,000 (approximately $326).

However, a subsequent public notice dated August 7 2014 issued by the Indian Trademarks Registry pursuant to the Gazette notification of August 1 2014 states inconsistently that the official fees for requesting expedited examination have increased from Rs17,500 to Rs20,000.

This inconsistency seems to result from an earlier notification published in the Gazette of India on December 29 2010, which increased the official fees for filing a trademark application from Rs2,500 to Rs3,500 without mentioning the corresponding increase in the official fee for requesting expedited examination as per Rule 38(1) of the Trademarks Rules. Rule 38(1) states that the official fee for expedited examination shall be five times the official fee for filing a trademark application; accordingly, the 2010 Gazette notification should have also stated that the official fee for requesting expedited examination had increased from Rs12,500 to Rs17,500. Therefore, the 2014 Gazette notification states that the official fees for requesting expedited examination have increased from Rs12,500 (and not Rs17,500) to Rs20,000, while the Trademarks Registry followed Rule 38(1) in its public notice, presuming that the 2010 Gazette notification had mentioned an increase from Rs12,500 to Rs17,500.

As there was a delay between the Gazette notification of 2014 and the public notice issued by the Trademarks Registry, the latter has allowed applicants who had filed an application during that period to pay the additional fees (Rs500) by September 30 2014 to maintain the filing date of the application.

Although the increase in the fee for requesting expedited examination is not likely to affect most applicants, the increase in the fee for filing trademark applications may affect small entities and individual applicants. Under the Patents Rules 2003, there is a difference between the fees payable by individual applicants, small entities and large entities; however, the Trademarks Rules and the Trademarks (Amendment) Rules do not make such a distinction.

Adheesh Nargolkar and Shailendra Bhandare, Khaitan & Co, Mumbai