Jul 21,2020 | 08 min read

Filing a Trademark without a lawyer By Kunal Dev

Introduction:

Setting up a business requires hard work, finance, assets, and intellect. Every company competes with each other to make their products the best and distinguishable from the others. For this purpose, they use a trademark. A trademark is defined under section 2(zb) of the Trademarks Act, 1999 as a mark that can be depicted graphically and is distinguishable from others. It can be either in the form of a logo, symbol, word, mixture of colours, etc. It gives a brand a unique identity. The trademark needs to be registered so that no other person can use it as its own product. For saving the reputation, brand name, standards, or the company it needs to be registered. One can file a trademark either with the consultation of a lawyer or without the aid of a lawyer. 

How can you file a trademark without a lawyer?

  1. Construct a Logo and a Brand Name
    Construct a Logo and a Brand Name: The initial step begins with the construct of a logo or a brand name for the businesses. The company can opt for options like to assess the website that builds the logo for free or engage a technician to do so. They make the trademark selection and suggest new designs that nobody has used till now. One has to keep in mind that the trademark must be unique so that no one can claim his/her right over it.

  1. Application for Registration:
    When the logo gets finalized the applicant has to file an application for the purpose of registration. He can do it either through the online or offline mode. In this process, certain documents are also required with the application, like, brand name, owner name, company name, etc. For offline mode, he has to go to the registry office. The applicant can make the application request online by visiting the portal of Trademark Protection in India. Section 18 of the Act provides that the application of registration can be made in writing to the concerned Trademark Registry office.

  1. Documents required: 

There are certain documents which are necessary for filing the application:

  • Name, Address, and Nationality:
    The applicant has to furnish the above details while making an application for registration. If the applicant is LLP then the application must be made in its name. If the applicant is a company, it has to furnish the detail of its place of incorporation along with the details of the registered office address. In case the applicant is a proprietorship firm then the application must be made in the name of the proprietor. If it is a trust or a society then the application must be made in the name of the chairperson, Managing Trustee, or Secretary. Here, original proof or certified copies of the above-mentioned details are required.

  • List of goods and Services:
    The chart of goods and services on which the applicant has to obtain the trademark has to be submitted. If the trademark is for varied goods or services the application must be made for all. Here, the statement regarding the usage of such products or services needs to be submitted.

  • Soft copy of the to be registered trademark:
    A soft copy of the trademark must be submitted along with the application and if the mark is not in English then the applicant has to translate it in English for filing to make it more understandable.

  • Date when the trademark was used first:
    If the applicant has used the trademark anywhere before the filing of the trademark then it has to submit the date of such use. Along with it, an affidavit is required. If the trademark has not been used before, then the future date for the use of the trademark must be provided along with the application.

  • Power of Attorney:
    The power of attorney is a compulsory document. The applicant has to attach a power of attorney bearing his signature with the stamp duty. The power of attorney is filed under form TM-48. It should be performed in favour of an agent, individual, or an attorney.

  1. Registration:
    The applicant whether an individual or Startups or Small Enterprise has to pay Rupees 4,500 as few for the registration process. In all other cases, the fee is Rs. 9,000. 

The essential ingredient for registration of a trademark

  1. Any Person:
    In a wider sense, any person comprises any individuals, partnership firm, any association of persons, any company whether incorporated or not, any trust, and Central or State Government. Any individuals being a representative of the proprietor cannot apply for registration in his name.

  1.  Claiming to be proprietor:
    One can get the proprietorship in a trademark by use or by way of registration under this Act. It can be obtained through an assignment or inheritance.  In the case of the unregistered trademark but in use, where there is two rival company claiming for the same, the person who used the trademark first will have the proprietorship. On the other hand, in case of the proposed use of a mark, brought for registration, the designer or the originator, in case of any controversy, will have the proprietorship. The proprietor must have shown his bonafide claims at the time of making the application.  If the mark is not mistaken and it is as per the requirement of the Trademark Act and also no objection is made within the prescribed time period, the registrar shall accept the application.
    In case of a foreign mark, if a product or goods of any foreign company or manufacturer having a trademark, registered in abroad, is importing it good to any country under the same mark which has acquired distinctive character then in such case if anyone with the same or distinctively similar mark shall not be registered as it doesn’t pass the criteria of distinctiveness.

  1. Used or Proposed to be Used:
    One of the essential conditions of getting your trademark to be registered is that Mark has been or is being used or is proposed to be used. The proposer of the mark must have the definite and present intention to use the mark at the time of making the application. This definite and present intention is known as real intention to use the mar for a definite purpose and is different from the general intention of using the mark sometime in the future.
    Furthermore, the ‘proposed use’ of the trademark shall be general and fair and may vary in presentation or colour difference but such variations must not be completely different in use which is sought to be registered. If the applicant has not fair and present intention to use the mark but have mala- fide intention just to block the mark, it would come under the serious offence of commercial fraud and shall amount to registration in bad faith.
    For the purpose of making an application, it shall be filed with the registrar of the Trademark in a specified manner given under the Act and the registrar has its discretion to accept the application or t reject or accept it with certain amendments or modifications, conditions, or limitations. Whatever will be the decision of the registrar, he shall communicate it to the applicant in writing along and shall also mention the reasons for rejection or acceptance with condition or modification.

Conclusion:
Trademark Registration has become very easy nowadays. There is no need to engage a lawyer to file for registration of the trademark. It will not only save the money of the applicant but also the applicant would get an insight into how it works. The lawyers nowadays charge plenty for such simple steps. So, now anyone can file for a trademark in such simple steps. 

Webliography:

  1. Trademark Registration in India, Retrieved from https://patentinindia.com/trademark-registration-india/

  2. Filing for Trademark? Here's how, (2019 May 15), Retrieved from https://www.lawyered.in/legal-disrupt/articles/filing-trademark-heres-how/

  3. Rahul Dev, Trademark filing in India- Trademark Registration Process, Retrieved from https://patentbusinesslawyer.com/trademark-filing-in-india-trademark-registration-process/

  4. Guide to Trademark Registration: Application, Filing, and Documents, (2019 August 27), Retrieved from https://www.myadvo.in/blog/trademark-registration-application-filing-documents/amp/

  5. Megha Ahuja, How to File a Trademark Application in India? (2018, October 6), Retrieved from https://www.latestlaws.com/articles/how-to-file-a-trademark-application-in-india-by-megha-ahuja/

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ABOUT THE AUTHOR


KUNAL SINHA

As an international, sector-focused law firm we are here to help you overcome your complex business challenges.We're a team of extremely focussed and driven young lawyers, attempting to change the way the Legal industry works with our expertise and grit. We believe in providing efficient and transparent solutions to our clients. You can stay up-to date with legal environment follow our blog at http://ahvanalaw.com/blog/ or visit our website at http://www.ahvanalaw.com/Home/Index#about

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