ABSTRACT
“A trade Mark may be a company’s guise and oneness within the market place” – Kalyan C. Kankanala.
The business profession’s success and powerful brand acquiescence go hand in hand. In such a scenario safeguarding the brand with the assistance of “Trademarks” becomes an important and foremost step to ensure brand security issues. With an increase in entrepreneurial spirit, proper branding and protecting one’s intellectual property also have become a vital role. Ownership of a trademark in India is decided on a first-to-use basis. Unlike the law on patents or designs, the trademark law mandates the first-to-use rule over the first-to-file rule. So, this article spots what is a trademark? Can an individual himself apply for a trademark? And, also the procedures for the application of trademarks.
TRADEMARKS
According to Trademarks Act[1], 1999, Section 2 (zb) “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and- in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark. Hence, a trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another[2].
WHO MAY APPLY FOR TRADEMARKS
A person who claims to be the owner of a trademark can apply to register its mark for products or services. A party may apply to register a trademark with the trademark office under whose jurisdiction the principal place of the applicant’s business falls. However, if the principal place of business is outside India, the application should be filed with the trademark office under whose jurisdiction the office of the applicant’s agent or lawyer falls[3].
Answer to the second question, can a person apply for a trademark himself? Yes, it is possible for a common individual to apply for a trademark especially when all the laws and rules are properly laid down for a trademark to be applied and filed. Even a layman who wants to register a trademark can apply himself. But when it involves practical applicability, appointing an attorney for such process will make the registration easier. Who is a trademark attorney? A trademark attorney may be a one who is expert in matters concerning to trademark laws, designs and practices. He provides legal advice and assistance in fields relating to trademark laws and other laws relating to intellectual property rights. Applying for a trademark may be a huge and tedious process and hence a common man is not able to handle all those vast process involved in applying trademarks. So, it is suggested that a trademark attorney are often hired for those purposes because such person possess much knowledge about IPAB areas and other laws associated with IPR.
PROCEDURE TO APPLY FOR TRADEMARK
The procedures are to be followed to apply for a trademark:
- Trademark Search – it should be wiped out in various combinations of similar marks on the intellectual property website. Then All India record is searched thoroughly to spot any similar registered trademark.
- Application – it is prepared by a trademark attorney. The form will be prepared for approval and signature of the applicant.
- Filing – it is completed with the trademark Registry. The trademark office takes about 2 years to consider or grant the applied trademark and post within the trademark journal.
- Government processing – once the application is filed, the status of the trademark application is going to be checked periodically. Just in case of any opposition from a party claiming a similar/identical trademark, it has to be submitted and settled by the applicant within 30 days. Suppose, if the case is won, that the trademark granted by the office/Court.
TRADEMARK ATTORNEY- A BETTER CHOICE
To illustrate, suppose company XYZ produces a cleaning solution for eyeglasses called Crystalens TM (a clever contraction of the words “crystal” and “lens”) for which they have a legitimate/legally registered trademark. Should another company infringe upon this trademark by copying the name Crystalens verbatim or partially, then company XYZ is justified in suing the infringing party. Here, the company XYZ will be hiring an attorney for that purpose.
Why a trademark attorney is usually suggested to be hired in apply for a trademark? A number of main reasons that result in the appointment of an attorney are:
(1) Disqualified/ dismissed- refusal based on one or more of the mentioned grounds.
(2) Complications in process- incorrect and improper listing may render application worthless.
(3) Selecting the wrong trademark class[4]– While it may look tempting to list every product or service imaginable on the application, this is often illegal. So, one must explain briefly, the products or services its trademark will apply on the trademark application form. The trademark will apply to only these products or services which are given explanations, not to other products or services.
(4) Un foreseen circumstances- just in case of death of the applicant, the attorney can act as a legal representative with the consent of the deceased person’s legal heir[5].
(5) Choosing the incorrect applicant: The applicant files a trademark application under the wrong applicant, this might cause refusal of trademark registration.
(6) Also, the applicants place of business is outside India means, the trademark application can be made under the jurisdiction of a lawyer.
Hence, these are the reasons why an individual is under the necessity of an attorney. The attorney will take the burden off the shoulders of his client and also a qualified/professional person to argue the matter on behalf of his client. Likewise, the company XYZ hired an attorney so as to avoid complex process and to ease the method to register a trademark and to win the case smoothly.
CONCLUSION
To conclude, trademark selection, management and security are the serious and analytical process to any business/ company. Any single mistake will ruin the entire registration/application process. Any person can afford to do away with an attorney. Even though, he possessed knowledge about the existing and prevailing laws, he cannot handle all the complexions involved in trademarks. The registration process and application may look easy but in true sense it is not. It involves many problems, as an individual who is applying for trademark does not foresee such problems then, it becomes outrageously daunting. So, it advisable that an attorney who is expert in all these works can do so legally and provides legal opinions about the laws involved in those matters. Hence, hiring an attorney will be a wise decision because he will look out all the required and complicated process.
[1]https://indiacode.nic.in/show-data?actid=AC_CEN_11_60_00004_199947_1517807323972§ionId=16787§ionno=2&orderno=2
[2]https://cyber.harvard.edu/metaschool/fisher/domain/tm.htm
[3]https://www.lexology.com/library/detail.aspx?g=51704e3b-5ebb-4dad-852f-991d02a0c1a7
[4]https://www.intepat.com/blog/trademark/trademark-filing/
[5]https://www.indianbarassociation.org/is-an-attorney-required-to-register-a-trademark/
This Article Written by SHRUTHI. U, 4th Year BA.LLB (Hons) student of Sastra University
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