- Achyuth Rao N
Filing Trade Mark Applications in INDIA
In recent times the Trade Marks Registry has introduced an e-filing portal through which most documents, including trade mark applications, can be filed quite easily. Here are the requirements to file in India and some tips to ensure that your applications sail smoothly through to examination:
Mark: If the mark is a logo mark, it is advisable to file it in black and white. Your lawyer will need a clear image of the mark. Similarly if the mark has stylized lettering, it is best to file in block letters.
Applicant’s Name and Address: Make sure that these details are accurate. Although this information may be corrected later (as long you are not changing the applying entity or person), an amendment request could delay advancement of the application to examination.
Date of First Use: All applicants are required to state a use basis in an application, e., whether a mark has been used in India or not. If not, you can file on the basis of proposed use in India. Use means commercial use of the mark within the territory of India. Technically speaking it is possible to amend use information in an application, but the Registry’s position on such amendments is unclear, so it is best to get it right in the first instance.
Specification of Goods and Services: You may file broadly. However, you should be aware that a consequence of filing broadly is that an ensuing registration may be subject to a partial cancellation action on the ground that the application was filed without a bona fide intention to use a mark and the mark was not used.
Power of Attorney: Though not required at the time of filing an application, it is best to submit with the application. If not, Power of Attorney may be submitted later, but submission must be done in person by hand. This may sometimes lead to delayed advancement of applications because the Registry may not match the Power to the application. If a Power of Attorney is not submitted timely, the application will not pass the formalities stage. Again, this might delay prosecution.
Excess Character Fee: Under the rules of the Trade Marks Registry, if the number of characters in a particular class exceed 500, an applicant must pay an excess character fee of USD 0.15 (INR 10) for each character in excess of 500.It is best to pay excess character fee, if any, with the application filing fee. If this is not done, sometimes, applications can remain pending for months because the Registry will not inform you of the deficiency suo moto. With the online filing system, the excess character fee has to be paid at the time of filing itself. The system automatically calculates the excess characters and lets the applicant know at the time of filing.