How to Draft and file a Trademark Application in India
How to Draft and file a Trademark Application in India
Trademark registration is a vital process for protecting your brand identity in India. However, to avoid unnecessary delays or rejections, it is crucial to carefully draft the trademark application, ensuring that it complies with the requirements of the Trademark Act, 1999. The process involves selecting the right class, providing correct applicant details, and submitting necessary documents to prevent objections.
In this guide, we will walk you through the steps involved in drafting a trademark application while addressing key aspects to avoid objections. We will also provide practical examples to help you understand how to ensure the application complies with the requirements, minimizing the chances of rejection or objections from the trademark examiner.
Why is Proper Drafting of a Trademark Application Important?
Drafting a trademark application involves providing accurate details about the mark and its usage. A poorly drafted application can lead to objections under Sections 9 and 11 of the Trademark Act, 1999, where marks may be rejected for being descriptive, lacking distinctiveness, or conflicting with an existing trademark.
By taking care of certain steps during the application process, you can avoid these common pitfalls and ensure a smoother path toward trademark registration.
Steps to Take Care of When Drafting a Trademark Application
1. Selection of the Appropriate Class and Category of Applicant
The first and most important step in drafting a trademark application is selecting the correct class of goods or services. The Nice Classification, an international classification system, divides goods and services into 45 classes. Each class represents a specific category of goods or services.
• Example 1: If you are registering a trademark for clothing, the appropriate class is Class 25 (which covers clothing, footwear, and headgear).
• Example 2: If you provide software development services, the appropriate class is Class 42 (scientific and technological services).
Correct class selection is crucial, as filing under the wrong class can lead to objections or rejection of the application.
Category of Applicant
When filing a trademark application, it is necessary to specify the category of the applicant. The applicant could be:
• Individual: A single person applying for the trademark in their own name.
• Partnership: A firm where multiple partners are applying for the trademark together.
• Company/Body Incorporate: A registered company or corporate body applying for the trademark.
• Association of Persons (AOP): A group or organization applying for the trademark.
Proof for Discounts in Government Fees
For entities like small enterprises, startups, or MSMEs, the government offers discounts on trademark application fees. If the applicant falls under these categories, it is mandatory to upload proof, such as:
• MSME Certificate or Udyam Certificate for Micro, Small, and Medium Enterprises (MSMEs).
• Startup Certificate for registered startups.
These documents should be uploaded at the time of filing to avail the fee reduction.
2. Adding the Proprietor Details: Name, Address, and Email
In the application, the details of the proprietor (individual, company, or partnership) must be clearly stated. The following information is mandatory:
• Full name of the proprietor (individual or entity).
• Complete address, including postal code.
• Email address for communication and notices.
Ensure that these details are accurate, as any error or mismatch may lead to objections or delays in processing.
3. Selecting the Category of the Mark
When applying for a trademark, it is essential to choose the type of mark you are registering. Common categories include:
• Wordmark: A trademark consisting only of text.
• Device Mark: A logo or symbol representing the brand.
• Colour Mark: A specific color or combination of colors used for branding.
• Transliteration or Translation: If the trademark is in a language other than English or Hindi, it must be transliterated or translated.
Example:
- If the applicant is registering a logo for a clothing brand, they would choose **Device Mark**. - If the applicant is registering the brand name “XcelCloth” in English, they would choose **Wordmark**.Ensuring that the correct type of mark is selected helps avoid confusion or rejections during the examination process.
4. Mention the Goods or Services Description Clearly and Specifically
The goods or services description should be specific and clearly mentioned in the application. Broad or vague descriptions may lead to objections.
Best Practices:
• Use precise and industry-recognized terms for the goods or services.
• Avoid broad terms like "miscellaneous services," which may lead to objections.
• If possible, limit the scope of the description to focus on the core goods or services offered under the trademark. This approach increases the chances of approval without objections.
Example:
• Instead of writing “clothing,” specify “men’s shirts, women’s dresses, and children’s jackets” for greater specificity in Class 25.
• Instead of "software," describe the type, such as "custom software for retail management systems" under Class 42.
5. Selection of User of the Trademark: Proposed to Be Used or User Since
The application should clearly state whether the mark is:
• Proposed to be used: The trademark will be used in the future.
• User since: The trademark has already been in use.
If you select “user since,” you must attach supporting documents, such as:
• Invoices showing sales under the trademark.
• User Affidavit affirming the use of the trademark since the specified date.
Example:
If the mark "TechSolutions" has been in use since January 2018, the applicant must provide invoices or advertisements from that period to support the claim.
6. Mentioning Additional Statements About the Mark
Adding additional statements about the trademark can strengthen the application and clarify its purpose. For example, the applicant can specify if the trademark includes elements like foreign language characters or if it is a derivative of an already registered trademark.
• Example: If the trademark "SportStar" includes a stylized logo of a star, the applicant may add a statement mentioning the specific design element of the star symbol.
This helps prevent objections related to misunderstandings or incomplete information about the mark.
7. Uploading All Required Documents
It is essential to upload all relevant documents in the specified section of the trademark application. These may include:
• Proof of prior use (invoices, advertising material, etc.).
• MSME or Startup Certificates (for fee discounts).
• User Affidavit (if applicable).
Ensure that each document is uploaded in the correct section to avoid delays or objections.
8. Previewing the Application Carefully
Before submitting the application, it is crucial to preview all details carefully. Review every section of the form to check for errors, especially the following:
• Applicant’s name and address.
• Mark description and category.
• Class of goods or services.
A quick review helps catch any mistakes that could lead to objections later in the process.
9. Digitally Signing the Application
Trademark applications must be digitally signed before submission. However, the digital signature will only work in Internet Explorer browser. If Internet Explorer is not available, it can be activated in Microsoft Edge browser in compatibility mode.
Once the application is digitally signed, the user must log out and re-login to the TM E-filing portal via Chrome browser for payment.
10. Making the Payment
After digitally signing the application, the final step is to make the payment through the available options on the TM E-filing portal. Before proceeding with payment, it is advisable to preview the application one last time to ensure there are no errors.
Once the payment is made, a confirmation is generated, and the trademark application process is complete.
Common Mistakes to Avoid in a Trademark Application
1. Incorrect Class Selection
Choosing the wrong class can lead to objections and delays in processing.2. Vague or Overly Broad Description
Describing the goods or services in generic terms can result in objections under **Section 9** (for lack of specificity).
3. Inaccurate Applicant Details
Make sure the applicant’s name, address, and contact details are entered correctly to avoid communication issues.
4. Not Submitting Supporting Documents
For “user since” applications, failure to provide the necessary invoices or user affidavits can lead to delays and objections.
Conclusion
Drafting a trademark application is a detailed process that requires careful attention to each aspect to avoid objections under the Trademark Act, 1999. By following the steps outlined in this guide, including selecting the appropriate class, providing accurate applicant details, specifying goods/services clearly, and uploading necessary documents, applicants can significantly reduce the chances of receiving objections during examination.
