There are various laps one needs to cross before successfully registering a trademark as enunciated in the previous post on TM application, prosecution process, and time-lines . At times, even after diligently following the steps as required by the Registry, the process as a whole takes a very long time. Here are few steps one may follow to ensure quicker registration and expedited processes.
Steps to maximise the chances of getting a quick trademark registration:
- Firstly, in order to increase the chance of getting a quick registration, one has to choose a ‘strong mark’. A duly selected mark itself add on greater value to the individual or the company and also helps in retaining a strong position in the market place. Whereas a weak mark can be hurdle in the path of a successful trademark registration. A strong mark is the one which has the least chance of refusal and the one which fits in the deciding criteria of trademarks i.e, something that is not confusingly similar to another mark, arbitrary, laudatory, descriptive contrary to law and religious sentiments, generic term and so on.
- Next most primal step for getting a quick registration is a proper Preliminary Trademark Search or a Trademark Clearance Search. Uniqueness itself is not the sole criteria that guarantees a successful registration. But a proper preliminary trademark search has greater importance in all the successful trademark registrations. It helps the proprietor of the mark or the applicant to be aware of the overall validity of the mark so chosen and also saves unnecessary expenditure required in any trademark litigation. A proper search will enable the applicant to make a wise choice as to whether to proceed further with the registration process or not. It gives an idea about the degree of distinctiveness that the mark possess so as to qualify itself for a successful trademark registration.
- One has to inspect the possibilities of objections both under Section 9 and Section 11 of the Trademarks Act, 1999 for avoiding any prospective objections that might occur during the examination phase.
- Once you have cleared the preliminary trademark search, be the first in line to file the application but along with a proper trademark strategy. There can be many perils associated with not having a proper and wise trademark strategy and this might lead to an unsuccessful trademark registration process. One can start trading while using the mark without any further delay. This is because a claim of prior usage is a turning point in any trademark prosecution. As held in various judicial pronouncements like Neon Laboratories Ltd. v Medical Technologies Ltd, it has been held that prior usage prevails over a prior registration.
- Acknowledge and respond thoroughly and promptly on receipt of any office action from the Registry. Also a timely monitoring of such communications are very much essential to avoid any undue delay and also for preventing the mark from being abandoned.
- Strict adherence to all rules and regulations given in the Trademark Manual.
- Avoid clerical errors in the submissions made to the Registry.
- Avoid anything that might seem offensive to the Examiner. For example use of snips or screen-shots in the submissions.
- Avoid the Formality Check Fail stage by filing the proper and correct information in the initial basic trademark application.
- There should be a consistency pertaining to all the submissions made to the Registry. Stick to the content of official documents throughout especially with respect to the dates that are submitted to the Registry. Also maintain sufficient and relevant documents in hand so as to claim prior use later on if needed.
- Conduct a proper scrutiny of earlier Trademark Publications.
- Marks similar or having resemblance to a well-known trademark ought not to be filed at any cost.
- In order to attain maximum and wide protection of business, separate trademark applications for word and logo can be filed with the registry. This is a usual practice of big companies. But with regard to smaller enterprises, the applicant can go for registering a word mark or a device mark based on the strength of the mark. A word mark enjoys a higher level of protection but at the same time it faces the highest level of scrutiny and vice versa is the case with the device mark which though faces a lower level of protection but enjoys a lower level of scrutiny as well. The visual representation of device mark makes it easier for the process of registration since it can be countered on the grounds of visual difference which is not the case with word mark as it is hard to distinguish alongside another conflicting word mark.
- Suppose if two or more marks are cited in the objection against the applicant’s subject mark, then consider each mark as a separate case. This makes the applicant’s case stronger and also helps get through the examination phase very quickly.
- Though application number gets generated promptly in both e-filing and physical filing, e-filing is preferred than the Physical filing. This is because there is a possibility of unnecessary delay due to errors in the manually entered and processed data in the paper application. But with respect to e-filing it speeds up the overall registration process by assuring an error free procedure and also enables proper online verification at all the points. Hence e-filing is time saving mode of filling application since it gets done in few clicks. Another important fact to be noted is that e-filing is comparatively more cost-effective since there is a 10% discount available on the official government fee in e-filing as compared to the total fees of physical filing.
- Make sure the specification of goods and service do not diverge from the acceptable list of goods and service given under the NICE classification or else there can be a risk of additional costs and unnecessary objections or delays.
- The recognition achieved by any company is directly proportional to the usage of the mark. Hence an extensive and continuous usage of the mark can result in a strong market presence, reputation and goodwill to be attached with the mark which in turn is one of the strongest point in favour of a successful trademark registration.
- Rule 34 of the Trademark Rules, 2017 provides for an Expedited Processing of Application. The request for expedited examination is to be made in Form TM-M citing the reason of the expedited examination. As per the previous set of 2002 Rules, the expedited process terminated with the issuance of examination report and on receipt of the reply. But with the 2017 Rules, the expedited process was extended up till the Registration stage whereby which the publication, opposition, hearing and so on, will be dealt upon expeditiously. But E-filing is a mandate for this expedited processing and also the fee for the same is 5 times of the normal government filing fees.
Keeping in mind these steps mentioned above will surely aid in securing faster trademark registration and ensure a smooth journey throughout the life of your trademark.
About the Author
Authored and compiled by Divya S. (Intern, BananaIP Counsels)
This post is brought to you by the Consulting/Strategy Divisions of BananaIP Counsels, a Top IP Firm in India. If you have any questions, or need any clarifications, please write to [email protected] with the subject: Trademark
Disclaimer: Please note that the news bulletin has been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the news published in the bulletin. You may write to [email protected] for corrections and take down.