Trademark Rules 2017: A Significant Leap

Trademark Registration Munim

The Government of India in its initiative to draft a new set of rules which are in calibration with the aim of fastening the procedure of trademark filing in India and scraping out the possibilities of delays in this procedure. A notification regarding the draft rules for Trademarks was published by the Government of India in November 2015 inviting objections and suggestions.

After a thorough study of all such suggestions and objections, the Central Government has framed the Trademark Rules 2017, thereby replacing the Trademark Rules 2002. These rules came into effect on 6th of March 2017.

In order the achieve its objectives, these are the major changes brought in by the Government of India:

CATEGORIZATION OF APPLICANTS

The foremost major that has been brought in by the Trademark Rules, 2017 is that now there is a clear categorization of the applicants and the fees will be charged as per the applicant’s category, the categories are:

A) Individual/Start-up/ Small Enterprise : In the new rules they have specifically defined what would constitute a start-up and a small-enterprise. The definitions for the same have been given in Rule 2 (v) and (x).

START UP- “the enterprise engaged in the manufacture or production of goods, where the investment in plant and machinery does not exceed the limit of INR 10,00,00,000 (Rs 10 Crore) and in case of an enterprise engaged in providing or rendering of services, where the investment in equipment is not more than the limit of INR 5,00,00,000 (Rs  5 Crore)”

SMALL ENTERPRISE-“an entity, incorporated or registered in India, not prior to five years, with annual turnover not exceeding INR 25,00,00,000 (Rs 25 Crore) in any preceding financial year and working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property. However, if any entity formed by splitting up, or reconstruction, of a business already in existence, it will not be considered as a startup and also, an entity shall cease to be a Startup if its turnover for the previous financial years has exceeded INR 25 crore or it has completed 5 years from the date of incorporation/registration. A Startup needs to obtain certification from the Inter-Ministerial Board.”

DIGITIZATION OF TRADEMARK PROCESS

In order to digitalize the entire trademark process, every applicant is required to provide a valid e-mail address along with the postal address in India. The new rules particularly Rules 14, 17 and 18 specifically talk about services via e-mail. The aim is to make the entire trademark registration process virtual.

CHANGE IN APPLICATION/REQUEST FEES

The 2017 rules have increased the application fees substantially. Majorly all applications/request fees have been increased by 100%. However, a concession on fees of 10% is available in case of E-Filing for promoting E-filings.

Moreover, the categorization of the applicant has also been used to determine the Fees. For example, the Applicants of Category A as above, are being charged Rs 4500 as Application for Trademark Registration.

REDUCTION IN FORMS

The biggest change is in the reduction of forms. Earlier there were a total of 74 forms relating to trademark applications/request and now it has been reduced to a total of 8 forms.

WELL-KNOWN TRADEMARK

Now with the new rules an application can be made for declaring your trademark as well-known trademark. The registrar on receiving such request will call for oppositions within 30 days. Incase it is established to be well-known publication for the same will be made in the trademark journal and it will be included in the well-known trademark list.

SOUND MARKS AND 3-D MARKS

The new rules have provided an application for registering sound marks and 3-D marks as trademark. This is a very big change as sound marks and 3-D marks are now capable of being registered and can be called as trademark.

EXPEDITED PROCESS

Another major change brought about in the new Rules is the provision for expedited processing; the entire trademark procedure can be expedited. Under this, the entire procedure including examination, reviewing of reply to examination report, appointment of hearings, advertisement, and opposition, until final disposal of the application would be fast-tracked.

HEARINGS THROUGH ELECTRONIC MEDIA

This is another change which is brought in for promoting digitalization, now hearings of various trademark applications can be done through video-conferencing or through any other audio-visual communication devices and this shall be deemed to have taken place at the appropriate office.

LIMITATION ON ADJOURNMENTS

Limitation on adjournments for any hearing or decision had been made to two and this adjournment should not exceed 30 days.

EXTENDED RENEWAL TIME

The new rules have extended the renewal time from 6 months to one year. Now renewal of a mark can be done 1 (one) year prior to the expiration of its registration.

NO EXTENSION TIME IN FILING OF EVIDENCE

The new rules have become little stringent for filing evidence in opposition proceedings. Now delay in such filing will not be accepted whereas in the old rules extension of one month along with respective fees was given.

ASSIGNMENT FEES

The new rules have now affixed a few of INR 9000 for all assignment of registered trademark irrespective of the fact whether assignment request is made within 6 months/12 months/after 12 months from the date of assignment.

These changes are substantial changes which will help the system for Trademark Registration in India function more effectively and smoothly. These changes will definitely simplify the entire Trademark Process and encourage more businesses to get their trademarks registered.

How to Name Your Startup

name your startup

Several Times we have faced this question from various startups that comes to Munim.in for Trademark Registration or Company Registration that what things should we keep in mind before naming a company, How to name the startup or brand, what all things to do to name the startup.

Several times, we have faced the situation wherein the Startups in the very beginning name the company without research in the legal directories and later on when they apply for Trademark Registration or Company Registration, they face difficulty in getting the desired name on which they have marketed the product.

A Clear Suggestion, Avoid This Situation.

It is to be understood that its just a one time cost (may in terms of time) to zero down to a great name but the benefit is forever.

It is to be understood that its just a one time cost (may in terms of time) to zero down to a great name but the benefit is forever.

Here we present, a list of Do’s and Don’ts while deciding on the Name of your Startup or Brand:

1. Make sure it’s legal and not being used!  This should be obvious, but it’s an important step that too many entrepreneurs skip.  Before attaching yourself to a name, make sure that someone else doesn’t already have claim to it by way of a trademark.  You should take a quick look at Trademark Search (available at Munim.in Footer). The good news is that if you satisfy some of the other conditions below (domain name, twitter handle, Facebook name), odds are relatively low that someone’s already using the name.

2. Hint At What You Do:  You have two paths to go when picking a startup name.  You can pick a name that is “synthetic” and made-up (example: Quora) or you can use somthing that is somewhat descriptive of what you do (example: Snapdeal or flipkart).  Synthetic names are often great in the long, long-term (easily trademarkable, and you can truly “own” them and infuse them with meaning).

3. Make it easy to remember: How do you know whether a startup name is easy to remember?  You don’t know.  So, test it.  Talk to people.  Describe the company.  At the end of a 2–10 minute conversation, casually ask them if they remember what the name of the company is.  If it didn’t “register” it’s not a failure on their part (and make sure to tell them that), but a failure on your part for not having something that’s memorable enough.

4. Make it unambiguous when spoken:  A quick way to test this is to ask friends and family what they think of the name over the phone — and ask them to spell it back to you.  If a decent percent of them get it wrong — or are uncertain, you’ve got a problem.

5. Make it unambiguous in Google:  If your name is something like “Pumpkin”, you’re going to have a harder time distinguishing when people are talking about the generic term, or when they’re talking about your company.  Of course, there are plenty of examples where a startup started with a generic word and went on to be pretty successful (Mint.com jumps to mind).  That’s why these are suggestions (not laws) and they’re changeable.

6.  The social media handles have to be available.  No tricks with numbers and underscores and stuff.  You want the most natural, obvious twitter handle that matches your company name.  This is not quite as hard as .com domain names — but getting harder every day.

7. Keep it short.  Always good advice, but particularly true in the age of Twitter/facebook.  The more characters in your company name, the more characters in the tweets that people write that mention your company name.  The fewer the syllables, the easier it is for people to say.  Great examples of one and two-syllable names:  Dropbox, Mint, FreshBooks, ZenDesk. 

8. Try to get your main keyword into the name.  This helps with SEO and signals to potential visitors what they might find on your site.  For example, one of sites is YourStory.com.  Not particularly creative, but you have to admit — it’s clear.  (And, is likely partly responsible for my high rankings in Google for a bunch of startup related words).

9. Don’t name your company after yourself.  When customers hear something like “Ramesh Sharma Enterprises”, it doesn’t make them immediately think “Wow, that must be an awfully cool/successful/stable company”.  It sounds a bit amateurish right at the get go.  The other reason is that if you name the company after yourself, too many people are going to want to talk to you.  That’s ok when you’re the only person in the company to talk to, but becomes problematic as your startup grows and there are other people trying to sell/support/market.

10. Don’t Use An Acronym:  It’s hard to get emotional about a three letter acronym.  It’s hard to hug an acronym.  As a corollary to this, try not to have a company name with three words in it, because it’s long enough that people are going to be tempted to reduce it to an acronym.

11. Have a story.  When someone asks (and they will), so why did you pick X for your name, it’s nice to have something relatively interesting to say.  Names are a part of your personality, and the absence of a personality is rarely a good thing.  It’s OK to be purely scientific in your name selection, but a good story never hurts. 

12. Pay attention to character sequences in multi-word names:  This one’s a bit subtle.  But, if you have a name that is two words stuck together, then be mindful of what character ends the first word, and what starts the second.  Example: If your company name is something like BetterReading, it’s sub-optimal (because Better ends with “R” and reading starts with “R”.  Normally, that’s OK, but when you type it out as a URL, people will often see:  betterreading.com — which is not terrible, but does cause the brain to “pause” for a micro-second because it feels a tad unnatural.  And, I’d be remiss if I didn’t bring up the widely popular example of unfortunate character sequences:  expertsexchange.com.  When capitalized properly, this name is just fine (ExpertsExchange) which is what the site owners intended.  But, it turns out, this can be confused as “ExpertSexChange” (which is not what was intended).  Make sure you think through the combinations properly.

13. Seek timeless instead of trendy:  It seems that every generation of startups has their own “trendy” approach to names.  Examples are the dropping-vowels thing (like Flickr), the breaking up of words (like del.icio.us) or the newly fashionable “.ly” names. Pick a name that is timeliness.  One that people will see 10 years from now and not think “Hey, they’re one of those companies…”. 

So try to think on these lines while naming your startup offering and believe that getting a name registered through Trademark Registration is very very important.

Do remember the case of Foodiebay rechristened to Zomato, because ebay in its name being one of the reasons and the name was not Trademark registered

Munim.in is a marketplace for professional services like company registration, trademark registration and other related services.