What you should know before you file a Trademark Application?

Registering a trademark has numerous benefits to the value of your goods and service, to your business and to your brand. A trademark is like any property that you can leverage, assign, license, sell, protect, rent out etc. But how do you make a mark your property? You begin to use it and you get it registered.

In this new series on Trademark Registration we’re breaking down the steps you should take to register your mark.

Prerequisites and preparations required before filing the applicatiom:

1. Trademark Search: The first step to filing a trademark application is checking whether a similar or identical mark already exists with the trademarks registry or in use, for similar or identical goods/services. At this point you could have a couple of options that you’re still choosing from or aren’t sure which iteration of your mark to apply for registration. A trademark search typically gives you considerable information on whether your mark is potentially registrable or not, and whether you need to tweak your mark to make it registrable.

2. Class of the Mark: Nice Classification, established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of all trademarks, all over the world. Read more about it here. Before you apply you should have already decided which class you want to apply under. Though the classes of goods may seem straightforward it's not so, especially the classes of services (Class 30 onwards) which can be slightly tricky. Make sure you consult an attorney well versed with the class system and is aware which class will give you maximum protection as per your business model. Remember you need varied registrations to use your mark in different ways.

3. The Mark itself:

   1. You should do a little bit of research on what a good mark looks like, branding-wise. Your mark is your identity and should be impressionable, timeless and effective.

   2. Your mark should be distinct and not be descriptive, customary, scandalous, prohibited etc. Basically, it should be able to justify if registration is contended under Section 9 and Section 11 of the TradeMarks Act.

   3. Then there is the colour, font, depiction, characters, etc of the mark. For example if you apply for a black and white mark and you are using it in a certain colour, though the black and white registration will give you prima facie protection of the mark in all colours, but you should also apply for the specific colours that you are using in everyday business.

Once these things are in order you can move onto the next steps. This includes:

1. Under whose name you can file - Deciding the Proprietor [this is a crucial part of strategy]

2. What jurisdiction will apply to you

3. Documents that will be required

4. Particulars that need to be mentioned in the application

5. Registration Fee

Though slightly technical, trademark registration is inherently just putting on record your existing or future monopoly over your brand identity. All the registry requires is lawful proof of this creation and ownership of the brand identity. In any case, we plan to walk you through the complete process step-by-step.

Watch out this space as we begin our recurring series on how to file a successful trademark application.