ASWAL ASSOCIATES- Intellectual Property Law firm India

India became member of Madrid Protocol on July 8, 2013.  The Initial advantages of Madrid system were huge as compared to filing a convention or ordinary application in India. For example, there was no limitation as to no. of goods or services in the description for Madrid filing, while those entering India otherwise were to pay for each additional character beyond 500 characters excluding space. Further, there was no mandate for payment of association fee, while other applicants with prior applications were to pay association fee for each of their prior application. Other advantage of course was saving the attorney fee and centralisation of trademark portfolio. But since the Trademark Amendment Rules 2017 have been notified from March 6, 2017, the disparity as to misc. fees for extra characters and association fee has been removed. Now even for direct Application into India otherwise than Madrid route, there is no limit as to description of goods or services.  Howev...

Trademark Amendment Rules 2017 have been notified from March 6, 2017. The positive feature of amendment is that now only few forms are applicable for various proceeding. The dichotomy in practice where ordinary Applicant was supposed to pay for extra character beyond 500 characters as well as association with earlier mark (whereas those entering through Madrid were exempted), is done away with. The drawback is Govt fee has been increased  up to 125% for various services. But the impact is minimum for natural persons, small entity and start ups where increase in fee is only 12.5% for e-filing and 25% for physical filing. The provision as to declaration of a mark as well known mark on payment of fee by Registry is somehow controversial provision, as earlier only the Court and IPAB were vested with such powers. Now it needs to be seen what marks are declared as well known by registry. If used carefully, this provision may save substantial costs towards infringement and passing of...