Why You Should Register Your (Well-Known) Marks in India- Now!

The enactment of the Trade Marks Rules, 2017, has paved the way for formal registration of “well-known” Marks in India. Although India did recognise Well-Known marks earlier (through its Trade Marks Act, 1999, which came into force on September 15, 2003), there was no provision for their formal registration. After the 1999 Act, the Indian Trademark Registry made efforts to consolidate marks that, over a period of time, were recognised as “well-known” by various Courts, Tribunals, Registrar etc. and made available this list online which has 81 “well-known” marks. 

Going by the list, Trademark “Philips” seems to have been the first trademark that was recognized as a well-known mark in India back in 1983. However, it was the famous case of “BENZ” by Delhi High Court which made Well-known marks concept well known and accepted in India (1994 PTC 287).

WHY WELL-KNOWN MARKS?

Almost every brand is created with the aim of making it a top brand; however, only a few survive the test of time and of those few, just a fraction makes it to the big league.

Looking back in history reveals that brands such as Toyota, Microsoft and Apple, that are today globally-recognised, took several years to enter the league. By contrast, brands such as Google, Facebook and WhatsApp made it to the list in much shorter timelines. Of-course, the nature of their business, the increasing pervasiveness of the internet and the era of rapid globalisation also played a role in these brands achieving global recognition much faster.

There surely are certain benefits of “well-known marks”, the most important of them perhaps being protection from dilution, provided of course, that they continue to deliver superior, differentiated products and services.

WHAT IS A WELL-KNOWN MARK?

Section 2(1)(zg) of The Trade Marks Act, 1999, defines a “well-known trade mark” in relation to any goods or services, as  “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”

What that means is - well-known marks are generally those that are acknowledged to have a high degree of reputation even beyond the areas of business of the proprietors of the marks. Such marks have attained such a degree of goodwill amongst general public (within a particular jurisdiction or even beyond) that even the use of such mark in relation to goods/services it is not generally associated with, would remind general public of the original source/product/service/proprietor. 

WHY DID INDIA AMEND ITS LAW TO PROVIDE PROTECTION TO WELL KNOWN MARKS?

India being a signatory to the TRIPS Agreement was obligated to amend its Trademark law by providing protection to well-known marks.

Articles 16.2 and 16.3 of the TRIPS Agreement contain certain provisions on well-known marks, which obligate member States to refuse or to cancel the registration, and to prohibit the use of a mark conflicting with a well-known-mark.

PROCEDURE FOR REGISTRATION OF WELL-KNOWN MARKS

Below we try to address a few questions like 'how to register a well known mark' and 'how much does it cost' to register a trademark.

Application for registration of Trademark:

As per Rule 124 of the Trade Marks Rules, 2017, any person may file a request for determination of a trade mark as well-known (interesting to note that here it has been avoided using the term “registration”, using instead the word “determination”). Each such request shall be accompanied by:

1. A statement of case describing the applicant’s rights and claim over such mark being a well-known mark;
2. Evidence in support of applicant’s rights and claims;
3. Details of a court order, if any in which such mark was recognised as a well-known mark; and
4. Requisite fee (INR 1, 00,000.00).

The Registrar may call for further such documents/information as he thinks fit for the determination of a mark as “well-known”.

Prosecution & Registration:

If the application is found in order, the Registrar may, before determining a trade mark as well-known, also invite objections from the general public. Such objections must be filed within thirty days from the date of invitation.

Notwithstanding the above, if it is found that a trade mark has been erroneously or inadvertently included in the said list, the Registrar may, at any time, remove a trade mark from the list of well- known marks, after hearing the concerned party.

WHO SHOULD REGISTER?

All proprietors who believe their marks to be “well-known” marks must consider making an application for determination of their mark as a well-known mark.

Further, proprietors of the marks that have been recognised by a Court of Law or Registrar as a well-known mark must also consider this registration with the Trademark Registry.

WHY TO REGISTER?

Once a trademark is determined by the Indian Trademark Registry to be as a well-known mark, the proprietor can be assured that no one else can register an identical or a similar mark in any of the 45 classes of goods and services in India. Registration would definitely safeguard the proprietors (of well-known marks) from the trouble of opposing every identical/similar mark every time a third party tries to register or to contest the registration of marks which may have been erroneously registered in any of the 45 classes.

HOW IS DETERMINATION/REGISTRAION OF A “WELL-KNOWN” MARK MADE?

As per Section 11(6) of the Trade Marks Act, 1999, The Registrar shall take into account several factors in determining whether a mark can be recognised in India as “well-known”. Such factors include the following:

1. the knowledge or recognition of that mark amongst the relevant sections of the public in India as a result of promotion of the trade mark;
2. the duration, extent and geographical area of promotion/use of the trade mark;
3. the duration and geographical area of any registration/application of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
4. successful enforcement of the trade mark to such an extent that such trade mark has been recognised as a well-known trade mark by any court or Registrar.

Further, Section 11(7) of the Act states that the Registrar shall, while determining whether a trade mark is a “well-known” mark for the purposes of sub-section (6), also take into account:

1. the number of actual or potential consumers of the goods or services;
2. the number of persons involved in the channels of distribution of the goods or services; and
3. the business circles dealing with the goods or services, to which that trade mark applies.

Section 11(8) of the Act provides that where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court of Law or the Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

CONDITIONS NOT NECESSARY FOR DETERMINATION AS A WELL-KNOWN MARK

Certain myths and misconceptions prevail that in order to be a well-known mark, the mark has to fulfil various other criteria- for example, it should be registered/used in India etc. However, Section 11(9) of the Act clarifies that for determination of a mark as a well-known mark in India, the following conditions are NOT necessary to be fulfilled:

1. that the trade mark has been used in India;
2. that the trade mark has been registered;
3. that an application for registration of the trade mark has been filed in India;
4. that whether the trade mark is well known in; or has been registered in; or in respect of which an application for registration has been filed in, any jurisdiction other than India; or that the trade mark is well-known to the public at large in India.

CONCLUSION

By making provisions for registration of well-known marks, India has made it easier for entities with well-known marks to safeguard their rights. As many other countries are still contemplating to bring about such legislations by this amendment India has definitely taken the lead here. Although a few organisations have questioned the validity of the provisions relating to registration of well-known marks, none has yet challenged them in a court of law. Proprietors of reputed brands now have an opportunity to register their marks as “well-known” marks in India in order to not only safeguard their marks against unauthorised and unlawful use but also to protect them from the risk of dilution by inferior product/services. 

This article was originally published at http://www.foxmandal.in/why-you-should-register-your-well-known-marks-in-india-now/.   Please visit http://www.foxmandal.in/blog/ for more interesting reading.

India: The Trademark Rules, 2017: Process made simpler, Faster, Start-up friendly but dearer

In a constructive attempt to streamline, simplify and expedite the trademark registration processes, the Trade Mark Rules, 2017 have been notified and came into effect from March 6th 2017. In consonance with the National IPR Policy, 2016, the Rules also introduce specific provisions for Start-Ups and Small Enterprises to stimulate and promote innovation and creativity among such entities.

The Salient Features of the Rules are as follows:

GENERAL:

• Definition of Start-Ups and Small Enterprise introduced.
• Number of Forms has been reduced from 74 to 8. 
• Procedures relating to registration as Registered User of trademarks have been simplified. 
• Provisions have been introduced to serve all applications, notices, statements and other documents electronically - from applicants to the Registry and vice-versa.

OFFICIAL FEES:

• Government Fee applicable for various trademark registration related activities has been simplified by reducing the number of entries to just 23. 
• Filing fee of a new application has been increased by about 125 %. (INR 9,000.00).
• Renewal fee increased close to 100% (INR 10,000.00). 
• Fee for expedited registration process increased by 100% (INR 40,000.00).
• Handling fee for Madrid Applications increased by 150% (INR 5,000.00).
• 50% discount on the new filing fee for Individuals/Start-Ups/Small Enterprise. 
• To promote e-filing, the fee for online filing has been kept 10% lower as compared to fees for physical filing.
• Fee for extra characters (beyond 500 characters) in the description of goods/services has been done away with.

EXPEDITED PROCESSING OF APPLICATIONS:

Provisions laid down for expediting the registration from filing through registration on payment of higher fees. Earlier, only examination of application could be expedited.

REPRESENTATION OF SOUND MARKS:

Sound marks applications to be also accompanied by reproduction in MP3 format (not exceeding thirty seconds’ length).

EXPEDITE OPPOSITION PROCEEDINGS:

• Provision to file counter statement to the notice of opposition as soon as it is made available online. 
• The requirement of serving a copy of opposition notice shall be dispensed with if a counterstatement has already been filed based on electronic copy of notice available online. 
• No scope for seeking extensions in case of filing evidences. 
• The number of adjournments for hearings reduced to 2 for each party and each adjournment shall not be allowed for more than 30 days.
• Mandatory costs up to INR 10,000.00 to be awarded to either the Applicant or the Opponent (depending on the case) for not contesting opposition proceedings thereafter. 

WELL-KNOWN TRADEMARKS:

• Modalities for determination of a trademark as a well-known mark have been introduced for the first time. 
• Application to be filed with an exorbitant fee of INR 1,00,000.00 per mark and only through e-filing.

VIDEO-CONFERENCING OF HEARINGS:

Provisions have been laid down to hold personal hearing through video- conferencing or other audio-visual communication devices.

RENEWAL OF REGISTRATION:

The window for renewal of registration now opens one year prior to the date of expiration as against six months under the old Rules.

EXTENSION OF TIME:

Any extension of time, as specifically allowed under the Trademarks Act, 1999, shall not exceed one month.

ASSIGNMENT OF TRADEMARKS:

• Providing a duly certified copy of original document, instrument or deed purporting to transfer the title will suffice; an original instrument or deed is no longer necessary. 
• Filing of Affidavit along with the application for recordal of assignment is no longer required. 

STATEMENT OF USE:

• All applications (except with the intent to use) shall contain a statement of use with respect to ALL goods or services mentioned in the application.
• An affidavit testifying such use (if application claimed prior user date) along with the supporting documents has to be filed.

Visibly Faster Turnarounds By Indian Trademark Registry

This morning, when I opened my inbox, one email in particular surprised me. The email contained our first ever “e-certificate” for a trademark application filed just about one year ago! In the past, such prompt action by Indian IP Offices was almost unheard of. But clearly, the technology-enabled procedural changes introduced over the past year or so have begun to bear fruit.

The issues faced by the Registry in printing and dispatching hard copy (Registration Certificates) are quite well-known. On many occasions, the certificates did not reach the intended recipients. This not only caused delay and inconvenience to stakeholders but also imposed needless cost on the Registry as well as Applicants (who had to apply for a duplicate certificate).

About a month ago, the Indian Trademark office, via its notification dated 28^th July 2016, had notified the new system of sending only e-certificates (Registration), and doing away with the century old system of sending hard copies. This was made effective from 1^st August 2016 for all trademark applications:

• published in the Trade Marks Journal on or after November 23^rd, 2015;

• where no request for amendment filed on behalf of the applicant is pending disposal;

• where Trade Mark registry’s database contains the original application;

• where no compliance requirement is pending on part of the applicant; and

• which have not been specifically prohibited for registration by the order of any court, IPAB or any competent authority.

With the adoption of the new system it appears that the Registry is taking every possible step to eliminate the root cause for delay and thus expedite the registration process and deliver on the higher standards outlined in India’s new IP Policy.

INDIAN TRADEMARKS REGISTRY ABANDONS PENDING APPLICATIONS – GIVES GRACE PERIOD TO REVIVE

The Controller General of Patents, Designs and Trademark of India (CG) vide its notification dated 4^th April 2016 has given an opportunity to all Applicants and authorised Agents of Trademark Applications which were recently abandoned by the Indian Trademark (TM) Registry to (re)submit their responses or make submissions (where response was not submitted earlier) by 30th April 2016.

This action will benefit the several thousand pending Trademark applicants whose applications were abandoned by the Indian Trademarks Registry due to lack of responses.

For the last several years, the Indian TM Registry had stopped sending Office Actions through the postal service. Instead, they uploaded them online on the TM Registry website. However, there were always delays and other issues in the process. It appears that due to discrepancies and mismanagement, several files and documents were misplaced and the TM Registry could not locate the filed responses which apparently caused a chaos at the Registry. However, instead of attempting to trace the missing documents, the Registry took the decision to simply abandon all applications where the Office Actions were issued (on/off line) and the TM Registry could not trace the responses submitted.

After much ado, the TM Registry has granted a grace period of 3 weeks (until 30th April 2016) allowing all applicants who had filed their responses to re-send copies of their responses. The same grace period also applies to those who did not submit responses because they did not receive the Office Action even though it was uploaded / sent through post. All applications that do not receive responses by 30th April 2016 shall be treated as abandoned.

On the one hand, the move to abandon the applications has been criticised widely as a sign of the Registry not holding itself accountable. On the other, it is also seen as a smart move to clear off the overload that is sometimes caused by non-serious applications.

If you or any of your clients have filed any trademark application in India, you may wish to check the status with your concerned Attorney. If it has been “abandoned”, you still have time till 30^th April 2016 to take remedial action and submit a response.

If you are a Fox Mandal client, be assured that we are checking the status of your applications and shall be reaching out to the TM Registry to take necessary actions. Also, if your application has been examined, you must send your instruction to file a response immediately so a suitable response can be drafted and filed on or before 30th April 2016.

PS: As per the latest news, as a result of several writ petitions being filed before different High Courts, on 5^th April 2016, the Delhi High Court vide its Interim order has stayed the order of CG. We await the final order and shall keep you informed. 

Guest post: .sucks me not: Why organisations & celebrities are afraid of this domain!

During a recent trip to San Diego for one of the world’s biggest IP conferences, I, alongside of over 10k IP lawyers from over 100 countries, came across a newly launched gTLD (generic top level domain) named .sucks. The unique launch campaign which involved mainly students who stood around the city holding banners with just .sucks written on it and giving away condoms in nicely wrapped packets with .sucks printed on the wrapper. Mobile signage vans making the rounds across the city captured people’s attention and the curiosity grew because all the signage said was .sucks.

What is .sucks?
.sucks is a new domain name launched by a Cayman Islands based entity called Vox Populi Registry Ltd., which is a subsidiary of Ottawa based Momentous Inc. In 2014, Vox reportedly paid over US$ 3 million to ICANN for the rights to manage the .sucks domain.

Why .sucks?
As per John Berard, Founder-Vox Populi; the .sucks domain is a platform for legitimate critical commentary, which is definitely not being considered true by others. In fact, in a recent statement, California Republican Darrell Issa termed it as “legalized extortion”.

Why the fear?
In today’s socially connected Internet era, bashing of brands (entities or individuals) is becoming more common and trust me, just like any of us, no one likes criticism of any kind. Therefore, entities and celebrities too find it hard to take the criticism that is hurled at them (even if it is a constructive one). A common practice by most of the entities is to troll social media platforms and other web sites to keep a tab on the criticism and handle it in a best possible manner. Since it is almost impossible to keep a track of all the social media sites to handle criticism, time and again it has gone out of control and ended up damaging brands and personal images mainly due to lack of a timely response or mishandling of the same.

With the launch of the .sucks domain, the public and media (including customers and potential customers) will get a specific platform to post their experiences, concerns, opinions and sometime vent out their anger (of course). However, the scary part of this solution would be that someone, other than you (the brand owner), owning that specific platform (www.yourbrand.sucks), would leave you with virtually no control over it!

The pricing controversy
Generally, a new domain is launched through a sunrise period before it is opened to the general public. In this case, Vox fixed the sunrise period price at $2499 which was considered exorbitantly high. The sunrise period was extended by a couple of months which added more fuel to the fire which finally ended on 19th June 2015.

From 21st June 2015 onwards this domain is open for regular registrations with reduced price, however, it is still considered to be high by many, as Vox has created various categories such as “Premium” and “General” under which the “big names” are still selling at the price of $2499.

Role of ICANN (Internet Corporation for Assigned Names and Numbers) and Slip ups
As you all would know, ICANN is the only authority in the world controlling the domain names. It has launched over 400 new domain extensions such as .CEO, .consulting, .social, .menu, .tech etc. in past year or so. However, the .sucks was the only domain which got more attention and criticism across the world for various reasons. Faced with mounting criticism and controversy, ICANN made failed attempts appealing to the U.S. Federal Trade Commission (FTC) and Canada’s Office of Consumer Affairs (OCA) seeking review of the legality of the .sucks domain extension1.

ICANN seems to have made a statement to the effect that it approved the .sucks domain because no one objected to it. The statement goes on to say that ICANN lacks the authority to block the domain or control its pricing.

What are big organisations and celebrities doing?
As of now, several large and well-known organisations like Google, Amazon, Microsoft, Yahoo, eBay, WhatsApp, have registered different variants of the .sucks domain. Similarly, many celebrities such as Taylor Swift, Justin Bieber, Oprah Winfrey, Rihanna, Mark Zuckerberg, Hillary Clinton etc. have registered their own .sucks domains. However, there are still many organisations (such as Twitter, LinkedIn and Indian biggies like Infosys and Wipro) that have apparently not yet taken any action against the potential threats of .sucks domain2.

What should you do?
If you are an organisation of repute or a celebrity and worried about uncontrolled criticism, you must consider registering .sucks domain. Even if you do not wish to have a website with the .sucks domain, Vox provides an option of blocking the domain so no one else can do it. This option actually costs about 25% less!

How to go about it?
If you are lucky or if your brand/name was not considered valuable enough by others, you may check the availability of your .sucks domain at https://www.registry.sucks/ and register or block it.

The domains have been classified as standard, premium, market premium etc., some of which are:

Standard: It includes names that don’t fall under premium or market premium categories and are available on first come first served basis. Registration and annual renewal cost is currently $ 249.

Premium: Vox has created a list of names which it thinks has a high market value. These premium names such as LinkedIn, Twitter, Infosys, Wipro are priced at a much higher cost i.e. $ 2499.

Conclusion
Amidst the raging .sucks controversy, it is expected to gain momentum going forward and drag many entities and celebrities into it. Where a handful of organisations have been proactive in registering this domain as a defensive step, others are either not aware of it or do not consider it to be a potential threat.

In my personal view, it is just a matter of time before disputes over the .sucks domain start, as cyber squatters are out there to make a quick buck and create trouble for valuable brands. In light of the above and without questioning ICANN’s authority or pre-empting what would be the future of this domain, it is recommended that you buy or block the .sucks domain, subject to your brand having market value and also if you believe that someone else might misuse it, if left unregistered. You may also consider blocking/buying it (of course, subject to availability), to avoid paying cyber squatters a hefty price and to give you the option to use this domain in the future if you so wish.

1: https://www.wxnetwork.com/the-controversial-sucks-domain-and-how-to-protect-your-brand/

2: http://marketingland.com/big-brands-sports-teams-celebrities-tech-companies-among-3400-early-sucks-domain-registrants-133621

3: https://www.registry.sucks/products

India: Government sets up IPR think-tank

By Santosh Vikram Singh, Partner, Fox Mandal, Bangalore 

The Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce & Industry, Government of India, through a press release dated 22 October 2014 announced setting up an IPR Think Tank to draft a National Intellectual Property Rights Policy and to advise it on IPR issues. The committee will also give its views/opinions on possible implications of demands placed by negotiating partner countries. This becomes essential especially when India and the US are trying to find a common ground on the prickly IPR issues in the working group to be set up under the bilateral trade policy forum.
IPR Think Tank is a six member committee chaired by Justice (Retd.) PrabhaSridevan, who had in 2012 figured among the 50 most influential persons in the world in the IPR field, Ms. Pratibha Singh (Senior Advocate)-Member, Ms. Punita Bhargava (Advocate)-Member, Dr. Unnat Pandit of Cadila Pharmaceuticals-Member, Sh. Rajeev Srinivasan (Director Asian School of Business, Thiruvananthapuram)-Member and Sh. Narendra K. Sabarwal (Retired DDG, WIPO)-Member and Convener.

This move comes at a time when the Government of India has launched a ‘Make In India’ campaign in order to raise the capabilities of the country’s manufacturing sector while also generating employment. A strong and favorable IPR regime will doubtlessly augment this programme by attracting foreign investment. Most large western pharma majors already have a manufacturing base in India; they are ready to set up additional units and invest in R&D facilities provided India amends its IPR regime suitably.

India’s move to constitute this think tank must also be seen in the backdrop of recent Patent Judgments in the pharmaceuticals sector, where Indian Courts prevented frivolous patenting as well as the extension of patents held by pharma companies just by tweaking existing drugs and passing them off as innovations. The US pharma industry has not taken kindly to these judgments and many companies have again attacked India’s IPR regime.

DIPP’s move is thus welcome, as it is in this context of growing concerns voiced by developed countries over India's level of protection to intellectual property rights over drug and agricultural products, and Prime Minister Modi’s promise (during his recent visit to the USA) to create a more investment and business friendly environment in India.

The think tank is expected to highlight instances where India has respected innovation in patent cases, while deciding to fast-track and finalize the policy road map by early next year. In its first meeting held on October 29, the committee decided to finalize the draft IPR policy by March 2015. The committee will advise the government on best practices to be followed in trademark offices, patent offices and other government offices dealing with IPRs to create an efficient and transparent system of functioning. The committee will also keep the government regularly informed of developments taking place in IPR cases that are likely to have an impact on India’s IPR policy. It will examine the current issues raised by industry associations and those that may have appeared in media and advice the government on addressing issues.

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.

Tata Motors moves court against trademark infringement | Business Standard

Tata Motors moves court against trademark infringement | Business Standard