FILING A TRADEMARK APPLICATION GETS COSTLIER IN INDIA

Guest post from our man in Bangalore, Santosh Vikram Singh of FoxMandal ...


The Government of India, vide its notification dated 1^st August 2014 has amended the existing Trademark Rules, 2002, and the amended Rules are now referred to as the ‘Trade marks (Amendment) Rules, 2014’. The proposed amendments were initially notified and made available to public on 26^th August 2013 inviting objection and suggestions from the public likely to be affected. Since, no objections or suggestions were received by the Govt. of India the proposed amendment were accepted and subsequently notified.

The salient features of the ‘Trade marks (Amendment) Rules 2014’ are:

1. The official filing fees for filing a trademark application in one class has been increased from INR ‘3,500.00’ to INR ‘4,000.00; and;
    
2. The official fees to expedite the examination of an application for the registration of a trademark, has been increased from INR ‘12,500.00’ to INR ‘20,000.00’.

It may be pertinent to note that during the Trademarks (Second Amendment) Rules, 2010, the application fee was increased from INR 2,500.00 to INR 3,500.00, however the fee for filing an application for expediting the examination which should have been proportionately increased five times of the application fee (INR 17,500.00), was inadvertently missed out which lead to a great confusion and until the latest notification it was not clear whether the fee was five times of filing fee i.e. INR 17,500.or INR 12,500.00 as mentioned in first schedule of the Trademark Rules.

Therefore, it may be seen that the current amendment is also to rectify the earlier mistake.

Since the notification came to effect since August 1^st 2014, the Controller General of Patents, Designs & Trademarks, India issued a public notice dated 7^th August 2014 stating that any applicant/agent who has filed the application on or after 1^st August 2014 and not paid the revised fee, shall have time until 30^th September 2014 to pay the balance fee failing which the application shall not be processed.

It may further be noted that if the balance fee is not paid within the afore-mentioned date, the filing date shall shift to the date of actual payment of the balance fees. Needless to mention that the date of filing an application is crucial, however, it is further important that if the application has priority of a convention application, paying the balance fee on or before due date becomes more crucial.

It may be noted that only as recent as 2010, the Government amended the official filing fees from 2,500.00 to 3,500.00, therefore, this increase by the Government can only be seen as a measure for the Trademark Office to increase their resources to ensure the long pending backlogs of applications are expedited, and on the other hand to ensure that the applicants choose their trademarks more wisely, before filing the same and to further lessen frivolous applications. 

India proposes hike in Patent Office fees

In a recent notification, the Government of India has proposed an amendment to the Patent Rules, 2003. The proposal is made to exercise powers conferred by sub-section (1) of section 159 of the Patents Act, 1970 which states that “The Central Government may, by notification in the Official Gazette, make rules for carrying out the purposes of this Act”. The Notification was published in the official gazette on 6th May 2013 seeking objection and suggestion from General Public.

The proposed amendments are of significance importance to the Patent process in India. The salient features of the proposed amendments are:

1. The First schedule of Patent Rules, 2003 has been revised to increase in the official fee by 100% for both natural and non-natural persons.

2. A further surcharge of 10% shall be levied if the filings for various proceedings are made in hard copy format and not use e-filing system. Levying of surcharge on the fee for filing patent applications and other forms through physical means by 10% is to encourage e-filing. The e-filing system was first launched by the Indian Patent Office (IPO) in the year 2007 which enabled online filing of new applications for Patents. The e-filing system is still not a favoured mode of filing method in India due to various technical drawbacks. Hence, the proposed increase in the fee may deter applicants from filing hard copies and subsequently encourage them to opt for online fling.

3. The Fourth Schedule of Patent Rules, 2003 has also been revised to increase the official fee up to 100%. Since, the pre-grant and post-grant oppositions have been rampant these days and one could also blame the meager fee involved with it, the fee have been increased with the belief that it would cut down frivolous oppositions. The fee for compulsory license have also been doubled apart from increasing the hike in fee for affidavits; and

4. Form 7 A has been introduced for filing pre-grant opposition. Since, Form 7 was used for both, pre and post-grant opposition; introduction of a separate form would ease the process.

The proposed amendment seems to have been made with the objective of reducing the number of frivolous patent applications and moreover comparing with the USPTO and EPO fee, the Indian Patent office fee has been very nominal. The proposed fee hike is currently facing a serious criticism from various sections and groups fearing that there would be substantive drop in filings by individual inventors and also from SMEs which may lead to lower industrial growth in India.