How to Register for Trademark in India? What are the procedures for filing a Trademark in India?
The Trademark Attorney’s at Patracode have a vast experience of filing trademark since 2010 and have filed huge number of applications in both national and international filing. Trademark is one of the intellectual property which is an asset to a business, therefore we need to ensure its safeguard. Therefore we suggest our client to go for a trademark registration. But here a question arises that trademarks which are not registered, are they not protected under law.
The answer would be yes, an unregistered trademark is protected under the law of passing off but not infringement. Then the question arises why we need to register it. The answer would be to come under the umbrella of passing off the trademark needs to be used extensively which is difficult and tedious work to prove in the court of law. Trademark is based on the concept of use and not just acquiring the right.
The first and initial step in an infringement suit is a preliminary injunction in which the infringer is stopped from using the trademark. In this case if your trademark is registered then it is a prior proof of ownership but in case where you have just used the mark and not got it registered then for prima facie case establishment purposes a trademark claimant has to show extensive usage in initial phase itself, which is generally difficult to make up due to limited opportunity available while filing the suit to delve deep into documents for establishing the prima facie evidence.
In case of passing off the trademark has to be well known as well as extensively used for getting protection under law of passing off. In case of an infringement the preliminary action taken is a temporary injunction against the unauthorized user for which you need to prove that you are a prior user this is the case where the registration of trademark or an application for trademark shall act in the favor of plaintiff or person whose trademark has been infringed. To bring up a case a prior application or registration of trademark would speed up the trial and a temporary injunction can be used as an immediate remedy. Hence we suggest our client to go for filing and do value addition to their asset.
The Principle of Use
Principle of Use can be explained by taking an example of Burger King US fast-food chain which has about 13,000 outlets across the world and had the trademark registered since 1979, still in a bitter position and is a victim of “non-use” of mark, sue to which it’s mark is allowed to be struck from trademark register by a company much smaller named Burger King restaurant.
Such an old company and having the trademark registered, still due to non-use the company is being refrained to have an advantage of earlier registration. Therefore if a trademark protection is acquired but not used then the owner’s right is diluted or he loses the right as trademark owner.
Consideration Filing Trademark
Before filing a trademark/service mark application, we consider the following:
- Whether the mark to be registered is register-able both federally as well as legally protect-able.
- How difficult it will be to protect the mark based on the strength of the mark selected.
The mark should be legally allowed by the law of the land that means should not be objectionable on the ground envisaged by the law. The strength of the mark is decided by checking whether the mark is similar or causing a likelihood of confusion in the minds of the customer. This is the preliminary step that we take by conducting a trademark search in the database looking for identical or similar mark in the same or different class of goods or services. Once a search report is generated which also includes an analysis whether the client needs to proceed with the trademark or not.
The filing procedure
Once the trademark search is done and the wordmark or logo is finalized then the next step is filing of the mark. Generally what we follow is we send a trademark information sheet to our client which includes details required for filing like name of party, address, mark to be filed, and business for which mark need to be used so that we can classify the mark according to the NICE Classification.
We send our client the Power of Attorney which we request the client to sign and send to complete the filing. Once all documents are received we file the trademark and within two working days an acknowledgement receipt is generated which we send to our client for updates. Once, the application is filed with the Registrar the client can start using the TM symbol.Then we keep updating the client regarding the status of the trademark application.
