Indian Trademark Law, including the Trade Marks Act, 1999, and the Trade Marks Rules 2017, is applicable only within the territory of India. Trademark Department have introduced new TM Forms replacing the old ones which govern the registration and protection of trademarks in India. Any trademark applications, registrations, and disputes are subject to the jurisdiction of the Indian courts. While Indian trademark law is not applicable outside of India, trademark owners can use international treaties and agreements to protect their trademarks in other countries.
Trade Marks Act, 1999 including Trade Marks Rules, 2017 are specific to India, many countries have their own trademark laws and regulations, which govern the process for registering trademarks in those countries. However, there are some global treaties and agreements that provide a framework for the protection of trademarks internationally.
For example:- the Paris Convention for the Protection of Industrial Property is an international agreement that provides basic principles for the protection of trademarks and other intellectual property rights. Further, the Madrid System for the International Registration of Marks allows trademark owners to protect their trademarks in multiple countries by filing a single international trademark application.
The Trade Marks Rules, 2002 which governed the registration and management of trademarks in India were replaced by the Trade Marks Rules, 2017, which came into effect on March 6, 2017, and introduced several changes and updates to the trademark registration process.
Some of the key changes introduced by the Trade Marks Rules, 2017, include the introduction of e-filing for trademark applications and the requirement for applicants to specify the "distinctive character" of their trademarks. The new rules also introduced new procedures for the opposition of trademark applications and the renewal of trademark registrations. Overall, the Trade Marks Rules, 2017, were designed to streamline and modernize the trademark registration process in India, making it easier and more efficient for businesses to protect their trademarks and intellectual property.
⇒ Introduced the option of e-filing trademark applications, making it easier and more convenient for businesses to file their applications online.
⇒ The new rules revised the fee structure for trademark registration, renewal, and related activities, introducing a sliding scale based on factors such as the number of goods or services covered by the trademark.
⇒ Introduced new forms for trademark applications, oppositions, and other related activities, with updated information and requirements.
⇒ The new rules introduced a streamlined opposition process, with specific timelines for filing oppositions and responses.
⇒ Introduced updated examination procedures for trademark applications, with an increased focus on the distinctive character of the trademark and the identification of conflicting marks.
Overall, Rules 10 and 11 of the new Trade Marks Rules govern the filing of fees and forms for trademark prosecution in India. These rules provide detailed regulations for the payment of fees and the filing of forms related to trademark applications, oppositions, and other related procedures. It is important to follow these rules carefully to ensure that your trademark application is properly filed and processed in India.
The TM Rules, 2017 require that trademark application forms be accompanied by the prescribed fees and all necessary documents as specified in the rules. Failure to provide the required fees and documents may result in delays or rejection of the trademark application.
Under the Old Trade Marks Rules, 2002, there were a total of 74 different forms for various procedures related to trademark filing and registration in India. These forms covered a range of activities, including the application for trademark registration, renewal, assignment, licensing, opposition, rectification, and many others.
However, with the introduction of the new Trade Marks Rules, 2017, the number of forms has been significantly reduced to only 8 forms, which cover all the necessary procedures for trademark filing and registration. Through introduction of new forms and updated existing forms to make them more comprehensive and user-friendly, while also streamlining the trademark registration process through the option of e-filing., making it easier and more efficient for applicants to file and prosecute their trademark applications in India.
¶ Bonus Points: The new rules have been revised to bring them in line with international best practices, and to provide more effective protection to trademark owners. By following these rules, trademark applicants can ensure a smooth and successful prosecution of their trademark applications in India. But before knowing the procedure for trademark filing, one needs to first understand what are the different types of Forms and as a result, understanding the purpose of each form is very important.
This form is for filing an application for registration of trade mark/collective mark/certification mark/series marks for the specification of goods or services in one or more classes. It is essential that the category of the mark be provided in the Form, such as, whether the mark on which the trademark registration falls is a wordmark, device mark, color, three-dimensional trademark or sound mark. The Web based TM-A form requires the applicant to provide details such as the name and address of the applicant, a description of the trademark, the class of goods or services for which registration is sought, and any priority claim if applicable. The form must be accompanied by the requisite fee, and all necessary documents such as a power of attorney or authorization letter, if applicable including if applicant is required to provide a Affidavit of use, which outlines how they intend to use the trademark in connection with the goods or services for which it is being registered.
Furthermore, the Applicable fees to be furnished along with the Form TM- A for each class and for each mark are- Where the applicant is an Individual/Startup/Small Enterprise then Physical filing fees is INR 5000 and for E-Filing INR 4500. In all other cases INR 10000 for physical filing and INR 9000 for E-Filing.
TM-M is filed when an applicant wishes to make a request for any miscellaneous function in respect of a trademark application, opposition, or rectification under the Trade Marks Act in India subject to payment of applicable fees. This form can be used for multiple purposes, such as:
⇒ Request for a certified copy of a trademark application or any document related to it.
⇒ Request for an extension of time for filing any document or complying with any requirement under the Trade Marks Act.
⇒ Request for an amendment or Corrections in the trademark application.
⇒ Request for a hearing in opposition or rectification proceedings.
⇒ Request for condonation of delay in filing any document or complying with any requirement.
The form requires the applicant to provide details of the trademark application, opposition, or rectification proceeding, along with the nature of the request or application, and any supporting documents. The form must be filed with the appropriate fee at the Trademark Registry office.
TM-O is used for filing a Notice of Opposition, Application for Rectification of the Register by cancelling or varying registration of a trademark, Counter-Statement, or Request to Refuse or Invalidate a trademark under the Trade Marks Act in India. This form can be used by any person who has a grievance against the registration of a trademark or wants to oppose the registration of a trademark.
This Form is to be filed by the registered proprietor of the concerned trademark or by an opponent/third party seeking to make a concerned request through the said Form. The 'Purpose' column in Form TM-O is divided into subcategories, and the applicant must select and fill out the appropriate sub-category. The subcategories are as follows: (i) for filing an opposition/rectification, (ii) for filing a counter statement, and (iii) for requesting to refuse or invalidate a trademark u/s 25(a)(b) of the GI Act, 1999. Furthermore, the fees to be furnished along with the Form TM- O are INR 3000 (physical filing) or INR 2700 (e-filing), and the Form should be filed in duplicate in the case of physical filing.
TM-R is a form used for the renewal or restoration of a registered trademark in India. The form can be used for both the renewal of a trademark that is about to expire and for the restoration of a trademark that has already expired.
In such cases, the applicant is the registered owner of the mark. In this Form, the applicant must provide his relevant information, the specifications of the mark and class, and the details for the trademark agent. Furthermore, the fees for renewal u/s 25 is INR 10,000 (physical filing) or INR 5000 (E-filing), for renewal with surcharge is INR 5000 (physical filing) or INR 4500 (E-filing), plus renewal fee and for application for renewal with surcharge/ restoration and renewal of trademarks under section 25 (3), 25 (4) is INR 10,000 (physical filing) or INR 9000 (E-filing), plus renewal fee.
¶ Bonus Points: It is important to note that if the renewal application is not filed within the prescribed time frame, a surcharge will be levied in addition to the renewal fees. Therefore, the form can also be used to pay the surcharge for renewal. Once the application is submitted, the trademark office will examine the application and may request further information or clarification. If the application is approved, the trademark will be renewed or restored for a period of 10 years from the date of expiry.
TM-C is filed when an applicant wants to apply for a Search certificate request under Rule 22(1) and 22(3) of Trademarks Rules, 2017. Furthermore, the fee prescribed for the request for search and issue of a certificate under Rule 22(1) is INR 10,000 (physical filing) or INR 9,000 (E-filing) and in case of a request for an expedited search and issuance of a certificate under Rule 22 (3) physical filing is not allowed, however, the fees for E-filing is INR 30,000.
Once the application is submitted, the Copyright Office will conduct a search of its records to determine whether any work similar to the work in question has been registered. If no such work has been registered, the Copyright Office will issue a certificate stating that fact.
¶ Bonus Points: It is important to note that the search and certificate obtained through this application does not provide any legal protection for the work in question. It only provides information about whether any similar work has been registered with the Copyright Office. For legal protection, the work must be registered with the Copyright Office using the appropriate forms and procedures.
TM-P is a form used to apply for post-registration changes in the trademarks in India. This form is filed when the applicant has to make the following requests-
(i) to replace the subsequent proprietor as the registered proprietor on the register,
(ii) to change the information of registered proprietors or registered users,
(iii) for the modification of registered trademarks,
(iv) for changes to the specifications of goods or services,
(v) for the purpose of converting goods, or
(vi) for the dissolution of a trademark association.
The above-mentioned requests are made u/s 16 (5), 40(2), 41, 42, 43, 45, 58, 59, 60 of the Trade Marks Act, 1999 and Rules 75, 80, 83, 85 of the Trademark Rules, 2017. Form TM-P is divided into three parts, Part A (Applicant’s details), Part B (Purpose of Request), and Part C (details of the person making the request and list of the documents attached with the said request application).
¶ Bonus Points: It is important to note that failure to update the trademark registration with accurate information can result in the cancellation of the registration. Therefore, it is essential to submit a TM-P application whenever there are changes to the trademark registration details.
TM-U is a form which is filed when a registered user wishes to register himself under Section 49 of the Trade Marks Act, 1999, or when an applicant wishes to make an application for cancellation or variation of a registered user under Section 50(1) of the Trade Marks Act, 1999, or when an applicant wishes to intervene in the proceedings by a third party under Rule 95 of the Trademarks Rules, 2017. Form TM-U is also divided into three parts, Part A, B, and C. Furthermore, the fee to be furnished along with Form TM-U is INR 5000 (physical filing) or INR 4500 (E-filing).
TM-G is a form used when an applicant needs to make an application for registration of a Trademark Agent u/s 19 of the Trade Marks Act, 1999, or a request for continuation as a Trademark agent u/s 20 of the Trade Marks Act, 1999, or restoration of the Trademark agent name in the register u/s 21 of the Trade Marks Act, 1999, or alteration of Trademark Agent details in the register u/s 22 of the Trade Marks Act, 1999.
Trademark registration is an important aspect of protecting intellectual property rights in India. By registering a trademark, an individual or a business can protect their brand identity, prevent others from using a similar mark, and establish a strong reputation in the market. The trademark forms provide a standardized and transparent process for registering, managing, and enforcing trademarks in India.
¶ Bonus Points: Understanding the different trademark forms can also help individuals and businesses to choose the appropriate form for their specific trademark-related needs. By understanding the trademark forms and the requirements associated with each form, individuals and businesses can ensure that their trademark-related applications are filed correctly, promptly, and in compliance with the Trademark Rules, 2017. This can help them avoid unnecessary delays, expenses, and legal disputes related to their trademark registration and management in India.