Initial steps for filing Trademark Application

In a layman’s language, a trademark can be defined as a design, symbol, mark, word or phrase that marks the identity for a specific product, commodity, or a service. It basically grants the lawful owner, a right of a lifetime to use, modify, or take any advantage from the registered trademark. It becomes a mark of identification for a specific brand, Company, etc. through which it can be easily identified from the rest of the brands present in the market.

Registration of trademark is governed under Chapter III of Trademark Act, 1999 read with Chapter II of Trademark Rules, 2017.

INITIAL STEPS FOR FILING OF TRADEMARK APPLICATION 

• Firstly, we need to decide upon whether we want to register a device, wordmark, colour, shape of goods, sound mark and dimension.
• Secondly, we need to identify the business of the applicant. There are 45 classes in which we can register our trademark. We can go for registration in a single and multiple classes as well.
• Thirdly, identify the trademark class in which the business of the applicant falls. The same can be searched on http://euipo.europa.eu/ec2/. Note down all the classes in which the business of the applicant falls.
• Fourthly, we need to conduct a public search as to whether there is any other existing mark that resembles or is similar to our mark on http://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx.
• Once we are satisfied that there is no similar mark registered as on date, then an online application for registration can be filed in Form TM-A using Attorney/Agent Code only. Please note that we can file offline application as well by physically filling Form TM-A and then dispatching/submitting physically the same along with the demand draft of the requisite fees to the Trademark Department.
• If we are using the mark from before, then a prior user affidavit also has to be submitted along with Form TM-A in accordance with Rule 25 of the Trademark Rules, 2017.
  • The following documents/information shall be required handy while filing Form TM-A:
  • Name of the applicant
  • Address of the applicant
  • Phone number and E-maid ID
  • Legal status in case the applicant is an entity.
  • Prior user affidavit (if applicable)
  • Letter of authorization in case the application is being filed online.
• The statutory fee for trademark registration is 5,000/- for individual/sole proprietor, Start Up (Certificate mandatory from start up India) and Small Enterprise (MSME certificate mandatory) and in all other cases, the fees shall be Rs. 10,000/-. Please note that in case the application is being filed online, there will be a rebate of 10% i.e. the statutory fees shall be Rs. 4500/- and Rs. 9000/- accordingly.
• In case the application has been filed online, the trademark application number shall be generated immediately and in cases of offline application, the same shall be received by the applicant within 2-3 days via email.

{The author is a Company Secretary in Practice and can be reached at (M) 9999952595 and (E) cskajalgoyal@gmail.com}