Filing Trade Mark Applications in India—Some Common Pitfalls

Filing a trade mark application in India should be simple, right? Wrong.

Consulting with a specialist is a good idea because there are many nuances to an application in India and ignorance regarding these nuances could cost you heavy.

1. Which is the appropriate application? Currently it is possible to file twelve (12) different types of applications to register a trade mark. Based on the information you provide, a specialist can assist in deciding the most appropriate application to file. Failure to file the correct application could render your application unacceptable, leading to a loss of rights that you have claimed.

2. What mark to apply for? Should you file for just the word or just a design or for a composite mark? These decisions are important because failure to apply for the appropriate mark may jeopardize your ensuing registration on the ground that you have not used the mark applied-for.

3. Who should be the applicant? The law mandates that only a proprietor of a mark can be an applicant. Thus, any party that is using or intends to use a mark should be the applicant. Often times, an application is filed in the name of an individual as opposed to a company or a firm. This approach could cost you dearly because if it turns out that the individual applicant did not use or intend to use the mark (separate from the company), the application could be void ab initio. It is not possible to correct a wrong applicant later on (although typographical errors can be corrected).

4. Goods and services. Every application must contain a description of goods and services. You must be familiar with the Nice classification to frame an acceptable description. Furthermore, it is important that an application list only those goods/services on or in relation to which there is bona fide/genuine use or intention to use.

5. Earliest use date. You will need to provide a date when the mark was first used in India in respect of the goods/services covered by the application. The term ‘use’ is construed broadly and is not restricted to application of a mark on goods. Pre-launch activities in India might also constitute use under certain circumstances. Failure to provide an accurate use date could be a ground to cancel your registration, once it issues.

For the above reasons, some of which could render your trade mark application void ab initio, it is important that you consult with a specialist before filing.