by Raja Selvam, Managing Attorney with Selvam and Selvam
While the Indian Trademark Office has been constantly trying to complete the mammoth task of clearing several thousands of trademark applications pending before it at various stages of prosecution, fulfilling the following steps would help you to protect your trademark in India quickly and cost-effectively.
1. File your trademark application electronically/online.
The Indian trademark office accepts applications for registration of a mark electronically. File your application online and save that tree. There are other reasons why you should file your application online. The application number and filing confirmation is instantly generated and unnecessary delays such as errors on the data manually entered from the paper application and costs and delays to rectify these errors are avoided. It also helps you in keeping paperless records of your trademarks portfolio.
2. Be clear on the specification of goods and services covered by your application.
When you file a trademark application claiming usage of a mark, specify only the goods and services on/for which you are actually using your mark. Even though the Indian trademark office is lenient, at the time of examination you may have to file additional evidence of usage of the mark by way of an affidavit. In the event of you being unable to provide evidence of usage of the mark on all the goods and services mentioned in the application, you may have to amend the application not only involving additional costs but also causing exorbitant delay in your application proceeding to the next stage towards registration.
You can file a trademark application with a wider specification of goods and services when you propose to use the mark in the future. However there is a possibility of a third party challenging your trademark registration on a later date on grounds of non use of some goods/services covered under the registration. The strategy for effective protection of your mark would be to file an application covering a wider specification of goods/services when you propose to use it in the future and file subsequent applications with specific goods/services claiming usage of your mark.
3. Submit all necessary documents at the time of filing.
There are only three documents that you may have to submit at the time of filing the application. A certified copy of the Priority Application when you claim priority from an application filed in any of the country who is a member of the Paris Convention, an affidavit along with evidences of usage of the trademark in India when you file an application claiming usage of the trademark in India and the Power of Attorney/Authorization if the application is filed through your counsel. Even though these three documents can be submitted with the trademark office subsequent to filing of your trademark application, it is advisable to have it filed at the filing of the trademark application. In most cases the examiners oversee the documents submitted later and raise a non substantive objection on missing documents which not only causes delay in your application proceeding to the next stage but also additional counsel costs for late submission of documents and responding to the trademark office’s objection.
4. Claim date of first use of your trademark in India.
Using your trademarks in India plays a very important role in your trademark protection strategy. The Indian Trademarks Act, 1999 defines the “use” of a mark in reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods and in respect of services to the use of the mark as or as part of any statement about the availability, provision or performance of such services.
The Indian Courts have held that limited sales, knowledge of the mark within specific circles, advertisements in magazines, newspapers, television, video films, cinemas, and internet circulated or made available in India even without the physical existence of goods/services in the Indian market amounts to use of the trademark in India. So the test to determine usage needs to be not just the physical presence of the goods/services in India but also to use the mark in India and such usage is bona-fide and the public has knowledge about the trademark.
Review the evidences you have before you and choose the first date of using the trademark in India and mention that date in your application. The trademark office may insist that you file an affidavit along with a copy of the evidences on which you rely for claiming your first use.
When the trademark application has been filed with sufficient information and the mark passing the tests of objections under absolute and relative grounds the trademark office allows the application to be advertised in the trademarks journal. This in practicality saves several months of delay that can be caused by a non-substantive objections such as missing POA and User Affidavit.
Disclaimer: The information contained herein is for informational purposes only and is not legal advice or a substitute for legal counsel.
Raja Pannir Selvam is a Managing Attorney with Selvam and Selvam, a law firm specializing in Intellectual Property. His main expertise lies in Trademark law and Domain disputes within the field of intellectual property.