JOINT PROMISORS AND THE NATURE OF THEIR LIABILITY

 

List of Forms and Sections in Trademark

Compiled by Ridhima Dixit (https://www.linkedin.com/pulse/trademark-forms-india-per-rules-2007-riddhima-dixit/ )

 

As per the earlier provisions of law so prescribed under the Trademark Rules, 2002, there were 75 different kinds of forms for the various procedures relating to the trademark filing and registration. However, as per the proposed amendment, the Ministry of Commerce and Industry had issued the Trademark (Amendment) Rules, 2017. In the new set of rules, the number of forms were reduced to 8, to simplify and streamline the whole trademark filing and prosecution process. These forms are available online and are easy to access even by a layman, who does not have any knowledge on how to apply for a trademark protection.

The purpose of each form is, thereby, very essential to be understood properly.

1.        TM- A (‘Application for registration of a trademark’)

This form is filed when an applicant wants to apply for registration of-

(i)             Trademark under section 18 (1) or 18 (2) of the Trade Marks Act, 1999,

(ii)            Collective Mark under section 63 (1) of the Trade Marks Act, 1999,

(iii)           Certification Mark under section 71 (1) of the Trade Marks Act, 1999, or

(iv)           for Series of Trademark under section 15 (3) of the Trade Marks Act, 1999, for the specification of goods or services included in one or more than one classes.

It is essential that the category of the mark be provided in the Form, such as, whether the mark on which the trademark registration is sought is a wordmark, device mark, color, three-dimensional trademark or sound mark. Furthermore, the fees to be furnished along with the Form TM- A for each class and for each mark is, where the applicant is an Individual / Startup / Small Enterprise, Rs. 5000 (physical filing) or Rs. 4500 (E-filing) and, in other cases, Rs. 10,000 (physical filing) or Rs. 9000 (E-filing).

2.        TM- O (‘Notice of Opposition/ Application for Rectification of the Register by cancelling or varying registration of a trademark/ Counter- Statement/ Request to Refuse or invalidate a trademark’)

This form is usually used when the applicant-

(i)      wants to apply for a notice of opposition under section 21(1), 64, 66 or 73 of the Trade Marks Act,1999,

(ii)     wishes to apply for rectification of register under section 47 to 57, 68, 77 of the Trade Marks Act, 1999,

(iii)    has to file an application under rule 99, 103, 135, 140 of the Trade Marks Rules, 2017, or

(iv)    has to file an application under section 25 of Geographical Indication of Goods (Regulations and Protection) Act, 1999 to invalidate a trademark or counter statement related thereto.

This Form is to be filed by the registered proprietor of the concerned trademark or opponent/ third party seeking to make a concerned request through the said Form. The ‘Purpose’ column in the Form TM-O is divided into sub-categories and the applicant has to choose and fill the sub-category as per its requirement. The sub categories are as follows: (i) in the matter of filing opposition/rectification, (ii) for filing counter statement and, (iii) request to refuse or invalidate a trademark u/s 25 (a) (b) of GI Act, 1999. Furthermore, the fees to be furnished along with the Form TM- O is Rs. 3000 (physical filing) or Rs. 2700 (E-filing) and in case of physical filing, the Form should be filed in duplicate.

3.        TM- R (‘Application for Renewal/Restoration of registration of a trademark or for payment of surcharge towards the renewal’)

This form is filed when-

(i)     Renewal of a trademark under section 25 of the Trade Marks Act, 1999,

(ii)    Request for Renewal with surcharge under the proviso of section 25(3) of the Trade Marks Act, 1999 or

(iii)   Request for restoration of a trademark under section 25(4) of the Trade Marks Act, 1999.

The applicant is such cases, is the registered proprietor of the mark. In this Form the applicant is required to provide his relevant details, the specifications of the mark and class, and the details of the trademark agent. Furthermore, the fees for renewal under section 25 is Rs. 10,000 (physical filing) or Rs. 5000 (E-filing), for renewal with surcharge is Rs. 5000 (physical filing) or Rs. 4500 (E-filing), plus renewal fee and for application for renewal with surcharge/ restoration and renewal of trademarks under section 25 (3), 25 (4) is Rs. 10,000 (physical filing) or Rs. 9000 (E-filing), plus renewal fee.

4.        TM- P (‘Application for Post-registration changes in the trademarks’)

Such a form is filed when the applicant has to make the following requests-

(i)     to replace subsequent proprietor as registered proprietor on register,

(ii)     to amend the details of registered proprietors or registered users,

(iii)    for amendment of registered trademarks, 

(iv)    for amendment in the specification of goods or services,

(v)     for the conversion of goods, or

(vi)    for dissolution of association between trademarks.

The abovementioned requests are made under section 16 (5), 40(2), 41, 42, 43, 45, 58, 59, 60 of the Trade Marks Act, 1999 and Rules 75, 80, 83, 85 of the Trademark Rules, 2017. Form TM-P is divided into three parts, Part A (Applicant’s details), Part B (Purpose of Request), and Part C (details of the person making request and list of the documents attached with the said request application).

5.        TM- M (‘Application/Request for any miscellaneous function in respect of a trademark Application/ Opposition/Rectification under the Trade Marks Act')

This form is filed when an applicant wishes to make a request for any miscellaneous purpose with respect to trademark such as to amend the trademark application, or seek grounds of decision, or seek Registrar preliminary advice, or application for deposition of regulation of collective trademark, or alteration of regulation of certification trademark, or request for Certified copy, or duplicate Registration Certificate, or extension of time, request to review of decision to registrar, or inspection of document, or request to registrar for particulars of advertisement, or review of Registrar’s decision, or Petition for obtaining Registrar’s order for any interlocutory matter in a contesting proceeding, or request to inclusion of a mark in list of well-known trademarks, or any other matters not covered in other TM forms.

6.        TM- U (‘Application for registration of Registered User/Variation of Registered User/Cancellation of Registered Users and Notice of intention to intervene in proceeding in cancellation/variation’)

This form is filed when the registered users wish to register himself under section 49 of the Trade Marks Act, 1999 or when the applicant wants to make an application for cancellation or variation of a registered user under section 50(1) of the Trade Marks Act, 1999, or when the applicant wants to make an application to intervene in the proceedings by the third party under Rule 95 of the Trademarks Rules, 2017. Form TM-U is also divided into three parts, Part A, B, and C. Furthermore, the fee to be furnished along with Form TM-U is Rs. 5000 (physical filing) or Rs. 4500 (E-filing).

7.        TM- C (‘Application for Search and certificate under section 45(1) of the Copyright Act, 1957’)

This form is filed when an applicant wants to apply for Search certificate request under Rule 22(1) and 22(3) of Trademarks Rules, 2017. Furthermore, the fee prescribed for the request for search and issue of a certificate under Rule 22(1) is Rs. 10,000 (physical filing) or Rs. 9,000 (E-filing) and in case of a request for an expedited search and issuance of a certificate under Rule 22 (3) physical filing is not allowed, however, the fees for E-filing is Rs. 30,000.

8.        TM-G (‘Trade Marks Agent Registration/Renewal/Restoration/Alteration’)

This from is filed when the applicant has to make an application of registration of a Trademark Agent under section 19 of the Trade Marks Act, 1999, or request for continuation as a Trademark agent under section 20 of the Trade Marks Act, 1999, or restoration of the Trademark agent name in the register under section 21 of the Trade Marks Act, 1999, or alteration related to details of Trademarks Agents in the register under section 22 of the Trade Marks Act, 1999.