Trademarks have become a sine qua non of business. From brand names and logos to product names and slogans, trademarks constitute an indispensable business asset. Securing legal rights over its brands through trademark registration is of utmost importance to protect one’s business identity.
Getting a trademark registered seems simple, but can you do it yourself?
The law of trademarks in India is provided under the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) and the Trade Marks Rules, 2017. Section 18(1) of the Trade Marks Act, 1999 provides that any person who claims to be the trademark’s proprietor about goods and /or services may apply for trademark registration. “Person” here refers not only to a natural person but also includes a body incorporate, partnership firm, HUF, trust, society, government authority/undertaking, an association of persons, and joint proprietor. So, an individual can file for the registration of his trademark himself. The application can be filed online through the e-filing gateway available at the official website or in writing with the Indian Trademark Office (TMO). However, it is pertinent to note that trademark filing cannot be equated to the process of trademark registration. The registration procedure of a trademark involves numerous steps, and applying for the same is merely one of them.
Steps in Registration of Trademarks
Selection of the trademark is the first and foremost step towards registering a trademark. This may appear to be an easy task but involves considerable effort as the mark selected must comply with the provisions of the Trade Marks Act, 1999 and must not fall afoul of the absolute and relative grounds for refusal under Section 9 and Section 11 the Act, respectively. A trademark search should be conducted to ascertain whether a similar trademark is already registered or being used in furtherance of the same. Before applying, it is also essential to identify and select the relevant classes under which the mark needs to be registered. The application must comply with the relevant rules of filing, failing which the Registrar will notify the applicant of deficiencies in the application providing a one month period for rectification of the same. If the deficiencies are not rectified in the said period, the application may be treated as abandoned. Post filing, the application is examined by the trademark office, and objections may be raised on various grounds to which responses must be filed within a month. Thereafter, the application is advertised in the Trademark Journal, providing third parties with the opportunity to object for a period of 4 months.
Hurdles faced while registering your own trademark
Registrability of Marks:
The application can be rejected on absolute or relative grounds of refusal. Therefore, while selecting a trademark, the trademark search must be done thoroughly, keeping in mind all relevant registration rules and their possible implications.
Classification of goods and services:
Selection of classes for goods and services regarding which trademark is to be registered is a daunting task. Any error made will result in opposition and lead to the cancellation of registration.
Responding to Objections:
Where the Trademark Office raises procedural or substantive objections, an appropriate response must be submitted. The objections proceedings often stretch up to 12-18 months and require timely action regarding filing replies to avoid application abandonment.
Trademark Opposition:
Where a registration application is opposed, the applicant is required to file a counter-statement, evidence in support of his/her application, and also attend the proceedings before the Registrar to present his case. The opposition proceedings involve legal intricacies and require knowledge of the applicable procedural and substantive law to defend the registration application successfully.
Conclusion
While the process of filing the trademark registration application appears to be fairly straightforward, there are a variety of potential complications in the trademark registration process that may arise, ultimately leading to the rejection or abandonment of the application. These complexities are best dealt with by an experienced trademark professional who can smoothly navigate the registration process while taking timely necessary action to ensure a successful trademark registration application. Therefore, though an individual is not legally barred from getting his/her trademark registered himself/herself, it is more practicable that an IP professional be employed for the same.