De-Coding Trademarks Rules, 2017
Time immemorial, the system of marking goods to identify marketing value of produced goods has been practiced. This practice led to the development of a trademark. It is primarily a design, sign or expression which is used to identify a product or services derived from a particular source. These are indicated by TM superscript above the logo of that product or service for an unregistered trademark and ® (R) superscript for a registered trademark. The owners of the trademark can be a company, organization or a service provider.
Trademarks help in distinguishing one’s goods of from its competitors in the market. The practice of brand piracy includes the unauthorized application of trademarks by producing and trading counterfeit consumer goods. Such a practice is condemned under the law as it creates discrepancy amongst the owner of the brand, owning the manufacture of products and its counterfeits. It also diverts the consumer to undistinguishable stance between the original, as counterfeit may not possess the quality of the original. Thus, to protect consumers’ interests and manufacturer's benefit certain laws have been enacted namely Trade Marks Act, 1999, administered by a government agency, Controller General of Patents, Designs and Trade Marks under the Department of Industrial Policy and Promotion (DIPP), functioning under the Ministry of Commerce and Industry.
Before 1940, the law of trademark in India was based on the principles of common law and idea of passing off and equity similar to that practiced in England. The first statutory law relating to a trademark in the country was the Trade Marks Act, 1940, followed by the enactment of the first Registration Act, 1875. Further in 1958, for consolidation of provisions regarding trademarks contained in other statutes, the Trade and Merchandise Marks Act, 1958 was enacted. The current law governing registered trademarks, Trade Marks Act, 1999 is the repealed version of The Trade and Merchandise Marks Act, 1958. The provisions of the statute are primarily governed by the rules based on the principles of the common law evolved out of the judgments of the Courts. Due to the ambiguity of the law, the principles developed, and its interpretations by the Courts in prior decisions have been applied in India. To keep up with the latest practice in commercial marketing trends and intellectual property laws, previous regulations relating to trademarks were considered to be outdated. Hence, the Government of India notified Trade Mark Rules, 2017.
Trade Mark Rules, 2017 effective from 06 March 2017, procures a view to making more comprehensible, the process of trademark administration. These Rules replace the existing Trade Mark Rules 2002. The main agenda being digitalization of the administration and methods have been set up for digital registration and electronic communication.
The Trade Mark office had recently stopped issuance of physical copies of registration certificates to promote digitalization of registration process. Few of the salient features of these new Rules are:
- Under this act, audio marks can be registered as a trademark. The bill states that a trademark application for sound can be filed with the sound in an MP3 format in TM form. Though, it is required to provide the origin and musical notes for the same.
- Modalities for service of documents from applicants to the Registry and vice-versa through electronic means have been introduced to expedite the process. Address by the service which is to be provided by the applicant or any party to the proceedings to communicate to the office can be sent through e-mail. Applicants can request express registration online.
- Completed service will be construed if communications are sent by Trade Mark office via e-mail. As it is not mandatory to serve documents through the post. This was done to increase the speed of registration process to avoid the problem of documents lost in transit.
- The process of registration as Registered User of trademarks has been amended to make the procedure more comprehensible.
- Anyone can request to enlist a mark as a well-known mark along with a statement of the case, evidence, and documents.
- Hearing through video conferencing has been introduced.
- Maximum of two adjournments in opposition proceedings has been declared by each party, which will help dispose of matters in time.
- The number of forms has been reduced to 8 from the existing 74 forms.
- There has been a drastic increase in the fees charged under this statute. It has been increased by 100% in most cases. It has been increased from Rs. 4,000/- to Rs. 9,000/- For a trademark application in a class.
- The different fee structure has been set up for an individual/small enterprise/startup/ and others. A difference of around 50 % in the fee structure is visible. The fee for a trademark application in the first category is Rs. 5000 and for the second category is Rs. 10,000/-.
- There is a 10 % reduced fee at all stages for online filings. This difference in comparison to physical filing would discourage paper usage as one would opt for online registration. 
Thus, enactment of Trade Marks Rules, 2017 proceeds to streamline and digitalize the pre-existing provisions related to trademark laws and its administration. The aim is to digitalize and less complicate the process of registration and application of trademarks to manufacturers companies etc. by providing a distinct identity to their products and services and safeguard against malpractices relating to trademarks.
 https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright. (last accessed 28-8-17)
 Restatement (Third) of Unfair Competition § 9 (1995)
 Trade Marks Act, 1999.
 Narayanan, P. (2004) Law of Trade Marks and Passing off (6th ed.). Kolkata: Eastern Law House. p. 6.
 Narayanan, P. Ibid p. 25.
 Narayanan, P. Ibid p. 2.
 Rule 34, Trade Marks Rules, 2017.
 Rule 18, Trade Marks Rules, 2017.
Rule 124, Trade Marks Rules, 2017.
 Rule 115, Trade Marks Rules, 2017.
Rule 50, Trade Marks Rules, 2017.
 http://pib.nic.in/newsite/PrintRelease.aspx?relid=158879 (last accessed on 28-8-2017)
 http://www.mondaq.com/india/x/574446/Trademark/ (last
Author: Tulika Bose
College: Army Institute of Law
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