Major changes to trademark registration procedure introduced

India
The Indian Trademarks Registry has brought about major changes to the trademark registration procedure by amending the Trademarks Rules 2002.
 
First, the official fees for filing an application for the registration of a single trademark in a single class have increased from Rs2,500 (approximately $55) to Rs3,500 (approximately $77). The increase is likely to create a stir, especially among individual applicants (natural persons). Under the Indian Patents Act, there is a difference between fees for individuals and fees for companies or applicants other than natural persons, but the Trademarks Rules do not make this difference. The fees had already increased from Rs300 under the Trademarks Rules 1959 to Rs2500 under the earlier Trademarks Rules 2002, and have now increased to Rs3,500. This represents a 40% increase from the previous fees under the Trademarks Rules 2002. However, from the point of view of large companies, this may seem like a marginal increase. As there was a time gap between the official notification by the government and the public notice by the registry, the latter has allowed entities which filed an application during that time to pay the additional fees (Rs1000) by February 28 2011.

Second, the registry has introduced a free search system/service on its website. The requirement to obtain an official search report by filing Form TM-54 (for a fee of Rs500 for a single class on a normal basis) and Form TM-71 (for a fee of Rs2,500 for a single class on an expeditious basis) under the earlier rules has been removed. The paid searches that were available on the registry’s website have also been discontinued. Further, the requirement to obtain an official company name search report by filing Forms TM-11 and TM-75 has also been removed.

Third, the registry’s website has been modernised. The free search interface on the registry’s website provides additional features and generally seems more efficient than the paid search service that was previously available. It provides the general public with:

  • the international classification;
  • the Vienna Classification;
  • a list of well-known trademarks; and
  • a list of prohibited trademarks.
Unlike the former paid search, the new interface provides guidelines for using the service. The interface also provides for a device mark search (using the Vienna Classification), Boolean operators ('and/or') and a classification search. However, none of these features have yet been enabled. Although the interface provides guidelines for carrying out searches, they do not specify that special search strings (eg, '%') are required to ensure that the search is exhaustive. For example, if a user searches for the word 'ved' in Class 5 but does not use a special search string, the search merely gives 164 results for marks beginning with the prefix 'ved'; problematically, it does not reveal marks consisting of the word 'ved'. However, by using the search string ‘%VED%’, a user will obtain over 1,000 results. The search interface is yet to be equipped with the 'exact word' search, 'prefix' search, 'containing string' search and cross-class search options, as offered by the US Patent and Trademark Office, the UK Intellectual Property Office, the Office for Harmonisation for the Internal Market and the Australian Intellectual Property Office.

In addition to the free search service, the history of each application and the documents filed in relation thereto are now available on the registry’s website.

Mustafa Safiyuddin and Shailendra Bhandare, Legasis Partners, Mumbai 

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