Trademark E-Filing Explained

What is a Good Trademark?

Given below are some qualities of a good trademark that has a high probability of being accepted -

• Easy to pronounce, remember and spell
• Should not be generic in respect of its goods or services
• It should be unique and distinctive. It should not be similar to any existing trademark in a manner that can be deceptive to the public.
• It should not be identical to other trademarks.
• It should not be similar to another trademark.
• It should not consist of laudatory words like best, perfect, etc.
• It should not be derogatory or hurt religious sentiments.
• It should not be prohibited by the Emblems and Names Act 1950.

Who is Eligible for E-filing a Trademark?

Any person who claims to be the owner of a trademark or a proprietor and who wants to use the mark exclusively for business purposes can apply for a trademark. Below are the persons who can apply for a trademark -

• Limited or Private liability partnership
• Sole proprietorship
• Partnership Firm
• Individual
• Joint Companies
• Trust and other legal entities

What can be Registered as a Trademark?

As per the Indian Trademarks Act 1999, the following can be registered as a trademark -

• Letters
• Slogans
• Signatures
• Numerals
• Devices
• Word Marks
• Shape of goods
• Color combination
• Sound
• 3D Marks

What to Consider While E-filing Trademarks?

Here are a few things that you must consider before e-filing trademarks -

Searching for a Distinct Trademark

Before you go ahead and indulge in the trademark e-filing process, it is very important to choose a trademark that is unique and distinctive in nature to avoid any kind of objections in the future. A preliminary trademark search helps you determine similar trademarks and deceptive ones that are already present in the trademark register. The trademark should not -

• Cause any confusion or deception
• Hurt the religious sentiments of citizens of any class in India
• Be scandalous or obscene
• Can be objected to under the Emblems and Names Act 1950.
• If it is a foreign word, it must be translated into English, and its distinctiveness should be established. Also, the translation of the word should not have any negative meaning in India.

Selection of Jurisdiction for E-filing Trademarks

It is also important to determine the appropriate registry depending on the jurisdiction while applying for the trademark. Your appropriate registry will be the jurisdiction under which the trademark applicant’s place of business falls. In the case of a foreign applicant, the appropriate office will be the place where the attorney or agent is based.

Particulars to be Mentioned While E-filing Trademark

You have to mention the following particulars while e-filing trademark -

• Name, address, and country of residence of the applicant
• Type of person - HUF, sole proprietor, partnership, individual, and body incorporated
• The trademark that you have applied for and its language
• The trademark’s translation or transliteration
• Class of goods and services for which you are applying for a trademark
• Specification of trademarked goods and services
• Usage detail of the trademark
• State of Jurisdiction
• Disclaimer of the mark and associated trademark

Documents Required for E-filing Trademark

• Power of Attorney: At the time of filing the application, you have to submit a power of attorney stating the person who is authorized to claim the use of the trademark.
• Priority Application: You also need to submit a copy of a priority application if it is a priority application case.
• Affidavit for Use: You have to submit an affidavit claiming the use of the trademark before it is registered.

What is the Process of E-Filing Trademark in India?

The trademark e-filing process in India involves the following steps:

a) Create an Account: Start by creating an account on the official website of the Intellectual Property India (IPI) portal, which is maintained by the Controller General of Patents, Designs, and Trademarks (CGPDTM).

b) Formulate Application: Prepare the trademark application, including details such as the applicant's name, address, trademark representation, class of goods or services, and any supporting documents required.

c) Online Payment: Pay the prescribed fees for the trademark application using the secure online payment gateway available on the IPI portal. The fees depend on factors such as the number of classes and the type of applicant.

d) Submit the Application: Once the payment is made, submit the application electronically through the e-filing system. Ensure that all the required fields are accurately filled to avoid delays or rejections.

e) Examination and Response: After submission, the trademark application undergoes examination by the trademark office. If any objections or deficiencies are found, the applicant is notified, and they must respond within the prescribed timeframe.

f) Publication and Opposition: If the application clears the examination stage, it is published in the Trademarks Journal for public notice. Interested parties then have the opportunity to oppose the registration within a specified period.

g) Registration: If no opposition is received or successfully defended, the trademark proceeds to registration. The applicant will receive the registration certificate digitally, confirming the grant of the trademark.

The trademark e-filing process can be a bit intimidating, especially for those who are not aware of the legal intricacies. If you are also a newbie and unaware of the complexities involved in trademark e-filing, you should consider taking professional help. This will ensure a smooth trademark e-filing process and help you focus more on your business.
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