India: Trademark Filing: Can You Do It Yourself?

Last Updated: 28 October 2016
Article by Intepat Team

Business success and strong brand empowerment go hand in hand. In such scenario protecting that brand with the help of " Trademarks" becomes significant. This is the first important pivotal step to ensure brand security.

With the increase in entrepreneurial spirit, proper branding and protecting one's intellectual property has become a much-required investment.

A great brand name is easy to sell, easy to market and even easier to secure. Thus, trademark filing is an important step to protect your brand name.

Trademark filing looks easy!! Can you do it yourself?

The Trademark Filing Process:

It usually gives the illusion that registering a trademark is almost instantaneous, but it can be quite daunting especially at the approval stage. Most of the IP offices allow online filing through their websites or accept the filing via fax. Some of them are:

Probable issues and their consequences:

In order to apply for a trademark, one should conduct an in-depth search for the proposed name and then apply for the trademark.

Common reasons that marks are refused trademark registration comprise, but are not limited to:

  1. Rejection: The trademark registration application may be rejected from the Trademark Office, on the basis of one or more of mentioned grounds mentioned in what can not be registered as trademarks.
  2. Complexities of the Trademark Prosecution process: It is equally important to decide which goods and services are to be covered. Incorrect and improper listing may render the registration worthless. Such problems are usually addressed by including disclaimers to limit the scope of protection.
  3. Conflicts with earlier rights: If the applicant files without having done an earlier rights search and wrongly believes that the Patent and Trademark Office has endorsed using his trademark by registering it. Basic trademark searches to identify any major issues or obstacles is always advisable before pursuing trademark registration.
  4. Choosing the wrong trademark class: While it may look tempting to list every product or service imaginable on the application, this is illegal. One must explain in detail, the products or services its trademark will apply on the trademark application form. The trademark will apply to only these products or services.
  5. Choosing the wrong applicant: The applicant files a trademark application under the wrong applicant, this may lead to refusal of trademark registration.
  6. Difference in trademark: The trademark as used and trademark as filed is different.

At times self-filers of trademark end up spending more money to pay an IP lawyer to fix their trademark application, or even to re-file it than it would have cost to hire an experienced IP lawyer to file the application for them.

Trademark creation, management, and protection are critical to any business seeking commercial success. A trademark protects a company's brand and a wrong step by a company can derail the registration process and lead to cancellation or revocation of one's trademark rights.

However, it is completely understandable to decide on self-filing of trademark, since the process looks easy and completely doable. But it becomes outrageously daunting when problems are subsequently encountered.

It is utmostly vital to file the trademark application precisely. The applicant needs to grasp that trademark office is the authorities to examine the submitted trademark application.

Conclusion:

Hiring an experienced trademark professional, to avoid trademark application problems is a wise decision to make. The trademark attorney will take care the comprehensive steps needed before filing . He would thoroughly help you selecting a mark which is not scandalous or deceptive. He will further ensure that the trademark is applied is in the correct class. Filing a trademark application precisely is a complex and time-consuming process and requires an erudite person to ensure error-free paperwork during the trademark registration process.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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