The New Trademarks Rules, 2017: what it means for startups

The new Trademarks Rules, 2017 (“New Rules”) that came into effect on March 06, 2017, has introduced significant changes to the trade marks application process and systems in India. The changes inter alia include an increase in the official fees, discounts for online filing of trademarks applications, hearing through video conferencing, and the maintenance of a list of well-known trademarks.

This post will cover only the amendments with respect to startups and small and medium enterprises (SME’s). The New Rules offer a fifty (50%) discount on the official fees for startups and SME’s with respect to filing an application for registration of a trademark. Additionally, it provides for an expedited processing of an application for registration of a trademark. Filing an application for registration of a trademark is Rs. 5,000 (Paper Filing) / Rs. 4,500 (e-filing and expedited processing of an application for registration of a trademark is Rs. 20,000 (e-filing only). Pre-conditions for the applicant include that it should be recognized as a startup by the competent authority under the Startup India initiative. (Note that to qualify as a small enterprise, the applicant’s investment in plants and machinery alone should not exceed ten crore rupees if the applicant is a manufacturer. However, if the applicant is a service provider, the investment in equipment in general should not exceed five crore rupees. This is covered under The Micro, Small, and Medium Enterprises Development Act, 2006.)

Unlike the Indian Patent Amendment Rules, 2016 where the applicant (being a startup/individual/SME) enjoys discounted costs for the entire life of a patent application and even subsequently thereafter at the time of renewal of the patent, the New Rules in case of trademarks provides the discounts only at the time of filing, for startups/Individuals/SME’s.

The other useful rule relates to the rectification of the specification of goods and services in the event of an erroneous description at the  time of filing the application. Such a mistake/error occurs on several occasions when entrepreneurs and applicants file applications on their own or by using a low-cost filing service provider not having an experienced lawyer, to classify the specifications of goods and services. Earlier, when the trademark office raised objections on erroneous classification, the only option was to file a fresh application or delete the specifications objected by the examiner. However, the New Rules provides for splitting of the classification and adding new classes to the present application. This will save the applicant from losing time and priority by filing a new trademark application.

This post has been written by our guest author Raja Selvam and this article was originally published on Selvam & Selvam.