There is no doubt India is committed to fostering innovation and attracting foreign investment, as demonstrated by recent government initiatives such as the ‘Make in India’ campaign.
In harmony with this, policy makers are continually improving intellectual property rights for the benefit of creators by modernising India’s IP infrastructure, implementing greater use of modern technologies and continuing to bring its IP laws into harmony with the TRIPS Agreement.
On 6 March 2017 the newest round of changes to India’s IP framework came into effect, further enhancing and simplifying the trademark application processes.
So what do the amendments mean for trademark holders?
How have the rules changed?
- Processes are simpler – Overall the amendments have resulted in a reduction of trademark forms from 74 to 8. The use of online technology and electronic communication is being encouraged with discounted fees for e-filing, and a mandatory requirement that an e-mail contact address be included on all forms filed with the registry. Oral hearings will now be possible via video conference.
- Measures have been implemented to reduce and resolve disputes – A number of measures have been introduced to reduce the number of oppositions and promptly resolve those that do arise. Penalties will now be imposed on parties that fail to prosecute or respond to a Notice of Opposition. The number of allowable adjournments of final opposition hearings will be limited to 2, not exceeding 30 days each. Multi-class applications may now be opposed with a single notice. Challenges over usage will also hopefully be avoided with the new requirement for “Affidavits of Use” which set out circumstances of the trademark’s existing, intended or eventual commencement of use (when it occurs after filing). The rules are also making it more difficult for applicants to file broad applications which include unnecessary class headings in the first place. Applicants must justify their use or proposed use of the mark within all classes of goods and services they have specified.
- ‘Well known’ mark status possible but discouraged – For trademark holders seeking to gain ‘well-known’ status for their mark, the rules now provide clear procedures. However, perhaps to minimise the number of such applications, applicable fees have been set at INR 1,000,000 (approximately AUD $2,000) and no time constraints have been placed on the review board to decide or dispose of such applications.
- Categories of non-traditional marks have been opened up – The definition of trademark has been expanded to enable registration of non-traditional marks such as 3-dimensional figures, shapes and sounds. Technology is being utilised to enable 30 second sound clips to be uploaded online as an mp3 file.
- All these developments will come at a cost – Filing fees and renewals have now gone up to INR 9,000 (approximately AUD $180) however discounts may apply for start ups and small enterprises. Online filing will attract a 10 per cent discount. Filing fees for oppositions, assignments and name changes have also seen marginal increases.
Despite its slow progress and still modest ranking in the 2017 International IP Index, India could be on the cusp of steady transformation. Its current leadership and constructive policies have the potential to create a robust business environment and greater access to foreign direct investment, venture capital and high-value jobs.
If you would like to know how to better protect your business interests in India, chat with us about your options.