Often before starting a business we pay a little attention to viability of actually getting a Trademark successfully over the brand name. Trademark filing and securing Trademark Registration is altogether a different ball game.
In case your brand name is really unique, there might be a chance that you may secure the trademark registration just within 7-8 months (but you can start using your trademark from the date of filing itself, rest can be handled by your Attorney).
So how to make sure you get this done!
To begin with you need to work around the basic premise to try an avoid Trademark Objection at any cost!
What exactly is trademark objection? Basically when you login to ipindia.nic.in and check your trademark application status and it says that the status is OBJECTED and there is an alert showing Awaiting examination reply, it means an examination report has been issued against your Trademark application.
This examination is done by the trademark examiners, wherein they state reasons why you should not get the trademark or what are the problems you need to correct in your trademark application. All these objections are uploaded in a form of report, which you may download from the trademark registry website.
This examination report is also known as Trademark objection report, which we need to reply within 1 month from the date of issuance of the report.
Generally, the once you file the reply to this trademark objection report, it takes about 1-2 years for the trademark registry to take any further action on to it (action can be either another objection, hearing or acceptance of your trademark).
So we shall always try to avoid Trademark Objection, however, 90% of the Trademark application do get atleast one which can be easily handled by any competent lawyer (however if you are stuck with novice trademark agent, cs, ca etc with not to smart arguments your trademark registration might just get stretched). Let us understand how we may shorten this Trademark registration process.
It is really important to establish that you get the Trademark you want to and in depth search both in terms of availability and in accordance with law which can become your savior.
There exist many stories where people invested lakhs and lakhs in packaging of the good, just after filing the trademark application. And coz of trivial mistakes had to pay humongous cost when their trademark got rejected.
So how can we be sure and opt for good trademark!
1) Do conduct a thorough search.
Conduct both word mark search as well as phonetic search
Suppose you have chosen word CURVE as your brand name, so you need to search availability of word CURVE as it is and also KURVE, KARVE, CORVE And all other possible combinations of word that are either resulting in same sound or similar sound.
Collect the search reports and properly analyze them. In case there exist a similar sounding word already on record, try to choose another brand name.
2) Do not use descriptive words:
In case your brand name is available, proceed to next level and understand whether that is legally acceptable brand name. That is it must not be descriptive in nature, you might find it strange but trademark law do not allow mark that exactly describes the nature of your products or goods however generally people tend to opt for such names. So it is always advisable to opt for coined word, words that have no dictionary meaning and makes no direct reference to your products or goods.
For example, you not opt for a name like “hair shine” for a shampoo, because an ordinary person can deduce that it’s some product related to hair care, which is expressly barred under Trademarks Act.
3) Do not use the name of any geographic location
Try to avoid using name of any geographic location or place such as India, even though it may be cleared if used in combination of words, but generally in most case such trademarks often get objected under section 9.
4) Do not make any clerical error
The most common mistake people make while filing for trademark application, is writing a wrong good/service description. Even though when you are sure that your product falls in a certain class, try not to use a common term for it. Always check the exact language that is given under nice classification, select the words and description accordingly. Let us understand this more clearly by taking an example.
Salt falls in class 30, but you will not find the term rock salt or black salt in class 30, so its better to avoid this in description as salt and related items will be covered well within the term salt and as black salt or rock salt is not specified in class 30, there is a high chance for the examiner to object this word in description. This not only will increase chance of an objection in your examination report, but also have cost attached to it. As any change in description or in trademark application post filing is done has a Govt. Fees of Rs.900 involved.
In case you want to secure a Trademark, free from any possibility of trademark objection and successful trademark registration, follow the above mentioned points. Any expert Attorney will keep in mind above points and will have correct arguments & description to make your Trademark Application free from any cracks that can be exploited by examiner.
These precautionary measures not only help securing a trademark registration surely but also quickly. As it is evident a Trademark application gets registered in 3 times faster in case it is advertised directly without any objection. After the notification of Trademark Rules 2017, the trademark registry is granting trademarks at comparatively faster rate.
Always refer the Trademark registration checklist:
1) Do good search
2) Do not chose abandoned mark
3) Do not use very common words
4) Do not try to take phonetically similar mark
5) Do an app store search as well for mobiles application trademarks
6) Do not just file for word mark also file for logo mark separately.
7) Do not file without affidavit of usage
About the Author
Is a qualified Patent attorney. Founder & Director at Company360.in (Experts in Company registration, Trademark Registration & Patent registration in India) , a IIT KGP Alum, Beyond being a legal eagle she is an adventurous cook and loves exploring new cuisines.