The TradeMark Rules 2017 was notified on March 6, 2017 under the TradeMark Act, 1999. It governs trade mark registration and management in India. Replacing the 2002 rules, they consist of 158 provisions in six parts, with four schedules for fees and forms. The rules streamline processes, promote digitalization and align with international standards like the Nice Classification. They cover trade marks, service marks, collective marks, certification marks and Madrid Protocol applications, ensuring efficient administration for businesses, startups and individuals.
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What are TradeMark Rules, 2017?
The TradeMark Rules 2017, were published by the Ministry of Commerce and Industry to regulate trade mark-related procedures, including registration, opposition, renewal and international applications under the Madrid Protocol. These rules consist of 158 provisions organized into six parts, with four schedules detailing fees, forms and costs.
Legal Framework: Enacted under Section 157 of the Trade Marks Act, 1999, the rules align with international standards like the Nice Classification and comply with the TRIPS Agreement.
Scope: Cover trade marks, service marks, collective marks, certification marks and international registrations, ensuring comprehensive governance.
Effective Date: Implemented from March 6, 2017, with savings for actions initiated under the 2002 rules.
Key Objectives of the 2017 Rules
The rules aim to simplify processes, reduce costs for certain applicants and promote digitalization. They reflect India’s commitment to efficient intellectual property management and ease of doing business.
Simplification: Reduced the number of forms and introduced single applications for multiple classes to minimize complexity.
Digitalization: Mandated electronic filing for most procedures, incorporating digital signatures, e-receipts and video-conferencing.
Cost Reduction: Provided fee concessions for individuals, startups and small enterprises to encourage trade mark registration.
Benefits for Stakeholders
The 2017 rules offer advantages to various stakeholders, including businesses, startups and individuals.
Cost Savings: Lower fees for startups and MSMEs make registration affordable.
Faster Processing: Expedited options reduce pendency and speed up protection.
Digital Access: E-filing and video-conferencing improve accessibility, especially for remote applicants.
Salient Features of the TradeMark Rules 2017
The 2017 rules introduced several changes to enhance efficiency and accessibility compared to the 2002 rules. These features address modern business needs and international obligations.
Electronic Filing Promotion: Most procedures require e-filing, with a 10% fee discount for electronic submissions. Applicants can use digital signatures and submit evidence electronically.
Fee Concessions: Individuals, startups and MSMEs (per the MSMED Act, 2006) pay 50% lower fees. For example, Form TM-A fees are ₹4,500 (physical) or ₹4,000 (e-filing) for eligible applicants, compared to ₹9,000/₹8,100 for others.
Simplified Forms: Reduced forms from 74 to approximately 25 (e.g., TM-A for applications, TM-O for oppositions). One form per request ensures clarity and reduces rejections.
Expedited Processing: Fast-track examination via Form TM-M completes within 3 months. Search reports and certificates are issued in 7 days and international applications are examined in 2 months.
Madrid Protocol Integration: Dedicated provisions handle international registrations, including WIPO forms (e.g., MM2(E)), certifications and refusals.
Well-Known Marks: A new procedure via Form TM-M (₹1,00,000 fee) allows declaration of well-known marks, with public input and a maintained list.
New Mark Types: Recognizes sound marks (via MP3), 3D marks, shape marks, series marks and color claims, with transliteration for non-English/Hindi characters.
Stricter Timelines: Opposition period is 4 months, counter-statements due in 2 months and evidence submissions are time-bound. Hearings allow up to two 30-day adjournments.
Agent Regulations: Specifies qualifications, exams, renewals and a conduct code for trade mark agents.
Language Provisions: English is primary, with Hindi allowed and translations required for other languages.
Read aboutWhat is a Trade Secret?
Structure of the TradeMark Rules 2017
The rules are organized into six parts, with Part I containing multiple chapters. Four schedules outline fees, forms and costs, ensuring clarity in procedural requirements.
Part I: General (Rules 1-129): Covers preliminary definitions, registration, opposition, international applications, assignments, registered users, rectification and miscellaneous provisions.
Part II: Collective Marks (Rules 130-135): Governs registration, examination, opposition and amendments for collective marks.
Part III: Certification Marks (Rules 136-141): Addresses applications, regulations and restrictions on assignments for certification marks.
Part IV: Trade Marks Agents (Rules 142-156): Details agent qualifications, registration, renewals and conduct.
Part V: Language (Rule 157): Specifies English as the primary language, with provisions for Hindi.
Part VI: Repeal (Rule 158): Repeals the 2002 rules but preserves ongoing proceedings.
Breakdown of Chapters in Trademark Rules 2017
There are total 8 chapters in Trademark Rules 2017 consisting of definitions, procedures for registrations, opposition of registration, international registration under Madrid Protocol, assignment and transmissions, registered users, rectification and correction and miscellaneous. Let’s find about the overview of these chapters:
Chapter I: Preliminary (Rules 1-22)
This chapter defines terms and establishes foundational procedures for trade mark administration.
Definitions: Includes terms like agent, startup and well-known trademark.
Jurisdiction and Fees: Based on the principal place of business, with fees listed in the First Schedule.
Forms and Classification: Uses forms from the Second and Third Schedules and follows the Nice Classification.
Chapter II: Procedure for Registration (Rules 23-41)
Chapter II outlines the process for filing and processing trade mark applications.
Application Filing: Done via Form TM-A with specifications for representations (e.g., size limits, MP3 for sound marks).
Examination: Applicants respond to objections within 1 month where expedited options are available.
Publication: Marks are advertised in the Trade Marks Journal for opposition.
Chapter III: Opposition to Registration (Rules 42-56)
Opposition procedures ensure third parties can challenge trade mark applications.
Filing Opposition: Via Form TM-O within 4 months of advertisement, with verified grounds.
Counter-Statement and Evidence: Counter-statement due in 2 months; evidence via affidavits, with opponent filing first.
Hearings and Costs: Conducted via video-conferencing, with costs per the Fourth Schedule.
Chapter IV: International Registrations under Madrid Protocol (Rules 62-74)
This chapter facilitates international trade mark applications through the Madrid Protocol.
Application Process: The application process uses WIPO forms (e.g., MM2(E)) with certification within 2 months.
Examination and Refusal: Examination occurs in 2 months and provisional refusals are notified to WIPO.
Invalidations: Handled as per international standards with transformation options.
Chapter V: Assignment and Transmission (Rules 75-85)
This chapter governs the transfer of trade mark rights.
Recording: Done via Form TM-P, with required proof and advertising.
Partial Assignments: Require separate registrations for each part.
Company Assignments: Special timelines apply which are generally of 6-12 months.
Chapter VI: Registered Users (Rules 86-96)
This chapter addresses licensing of trade marks to registered users.
Application: Via Form TM-U, with hearings and notifications.
Variations and Cancellation: Allowed with proper documentation and Registrar approval.
Chapter VII: Rectification and Correction (Rules 97-105)
This chapter allows corrections to the trade mark register.
Applications: Filed via Form TM-O, with provisions for interventions and suo motu actions.
Changes: Include address updates, mark alterations and re-classification.
Chapter VIII: Miscellaneous (Rules 106-129)
This chapter covers additional procedural aspects.
Well-Known Marks: Determination process includes public input and a ₹1,00,000 fee.
Appeals: Filed to the IPAB within 3 months.
GI Oppositions: Integrated with the Geographical Indications Act, 1999.
Schedules of the TradeMark Rules 2017
The schedules provide essential details for implementing the rules.
First Schedule: Lists fees, such as ₹4,000-₹9,000 for applications and ₹1,00,000 for well-known mark requests.
Second Schedule: Contains forms like TM-A, TM-O and TM-M.
Third Schedule: Includes Registrar’s forms, such as certificates and notices.
Fourth Schedule: Specifies costs for proceedings, ensuring transparency.
Also, Get to Know AboutInfringement of Geographical Indication.
Difference Between TradeMarks Rules, 2002 & Trademark Rules 2017
The 2017 Trade Marks Rules improve on the 2002 framework by reducing forms from 74 to 25 for simpler applications. They mandate e-filing, replacing manual processes. New provisions cover well-known marks, sound marks and full Madrid Protocol integration, absent or limited earlier.
Aspect | 2002 Rules | 2017 Rules | Improvements |
Number of Forms | 74 forms, complex and specific. | 8 forms (e.g., TM-A, TM-O), multi-purpose. | Simplifies filing, reduces errors. |
Fees Structure | Lower fees (e.g., ₹3,500 application). | Higher fees (₹10,000/₹9,000); well-known mark ₹1,00,000. | Discourages frivolous filings; 10% e-filing discount. |
Fee Concessions | Uniform fees for all. | 50% lower for individuals, startups, MSMEs (e.g., ₹4,500 application). | Encourages registration for small entities. |
E-Filing | Limited; physical filing standard. | Mandatory e-filing; digital signatures, e-receipts. | Enhances efficiency, transparency. |
Expedited Processing | Limited to examination; ₹2,500 fee. | Full process in 3 months; ₹20,000/₹40,000 fees. | Faster resolutions, tiered fees. |
Sound Marks | Graphical notation required. | MP3 file with notation (Rule 26). | Simplifies non-traditional mark registration. |
3D Marks | No provisions. | Registrable; 3+ views required (Rule 23). | Protects shapes, packaging. |
Well-Known Marks | Court-determined only. | Form TM-M, ₹1,00,000 fee (Rule 124). | Proactive declaration, less court reliance. |
Opposition Timelines | 4-month opposition; extensions allowed. | 4-month opposition; no extensions, ₹10,000 penalty (Rules 45-46). | Speeds up decisions, stricter rules. |
Adjournments | Unlimited (Rule 56). | Max two, ≤30 days each (Rule 50). | Prevents delays, faster hearings. |
Renewal Period | 6 months before expiry. | 1 year before; 6-month late period (Rule TM-R). | More renewal flexibility. |
Goods/Services Limit | 500 characters per class. | No character limit. | Allows detailed descriptions. |
Affidavit for Use | Discretionary (Rule 27). | Mandatory with evidence (Rule 25). | Reduces fraudulent claims. |
Video Conferencing | Not allowed (Rule 111). | Allowed (Rule 115). | Saves time, reduces travel. |
Madrid Protocol | Limited provisions (2013). | Chapter IV (Rules 62-74); 2-month processing. | Streamlines international applications. |
Address for Service | No email/phone mandate. | Requires email/phone; abandonment if not updated. | Ensures communication reliability. |
Search Certificate | ₹25,000, no expedited option. | ₹30,000, 7-day expedited (Rule 22). | Faster copyright-trademark checks. |
Application Withdrawal | No refund provisions. | Refund if withdrawn within 1 month (Rule 35). | Clear withdrawal process. |
Re-Advertisement | Not specified. | Required for major errors (Rule 42). | Ensures accuracy in ads. |
Reclassification | No NICE amendment. | Allowed, advertised (Rule 20). | Aligns with international standards. |
Agent Fees | Lower (e.g., ₹1,000 registration). | Higher (₹5,000/₹4,500); detailed rules (Rules 142-156). | Enhances agent professionalism. |
Summary
The TradeMark Rules 2017, mark a significant step toward modernizing India’s trade mark system. By promoting digital processes, reducing costs for small entities and aligning with international standards, these rules enhance efficiency and accessibility. Stakeholders benefit from streamlined procedures, faster resolutions and clear guidelines, making the 2017 rules a cornerstone of India’s intellectual property framework.
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TradeMark Rules 2017: FAQs
Q1. What are the Trade Marks Rules, 2017?
They are rules under the Trade Marks Act, 1999, governing trade mark registration and management in India, effective from March 6, 2017.
Q2. How do the 2017 rules differ from the 2002 rules?
They reduce forms from 74 to about 25, mandate e-filing and introduce provisions for well-known marks and sound marks.
Q3. Who gets fee concessions under the 2017 rules?
Individuals, startups and small enterprises pay 50% lower fees, like ₹4,500 for applications instead of ₹9,000.
Q4. What is expedited processing in the 2017 rules?
It allows faster trade mark examination within 3 months using Form TM-M, with fees starting at ₹20,000.
Q5. How do the rules handle international trade marks?
Chapter IV integrates the Madrid Protocol, processing WIPO applications and certifications within 2 months.
