Essential Requirements To File A Trademark: An Overview

Essential Requirements To File A Trademark: An Overview

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  1. Who can file a trademark application?
    2. The first requirement while filing a trademark application is to identify the proprietor of the trademark. According to Section 18(1) of the Trade Marks Act,1999; Any person claiming to be the proprietor of a trademark and is desirous to register it, can apply in writing in the prescribed manner to the Registrar for the same. The following can file a trademark application to register trademarks in India:
    • Individual
    • Joint Owners
    • Proprietorship Firm
    • Limited Liability Partnership/LLP
    • Partnership Firm
    • Indian/Foreign Company
    • Trust or Society
    • MSME
    Once the proprietor is identified, the next requirement is to determine the kind of trademark that is to be filed. As stated in the previous article, there are several kinds of trademarks that one can file, like word, device, shape of goods, sound mark etc. Thereafter, the next step is classification of goods and services.
  2. What is classification of goods and services? Trademark classification is the system of categorising goods and services in several classes. Once the proprietor identifies its class/ classes based on its goods and services, it files the trademark application thereunder. The said classification also assists the Ld. Examiners to assess whether the proposed trademark is in conflict with trademarks existing on the trademark register in the same class. There are 3 main classification systems that are used in India.
    1. Nice Classification The Nice Classification (NCL), established by the Nice Agreement (1957), is an international recognised system of goods and services. It is the primary classification of goods and services that is acceptable in India. It divides all the goods and services into 45 classes wherein classes 1-34 classify the goods and classes 35-45 classify the services.
    2. Office of Controller General Patents, Designs & Trademarks (CGPDTM) classification, IndiaThis system is in consonance with the Nice Classification and illustrates the goods and services that are acceptable with the CGPDTM office. CGPDTM uses the ‘TMclass tool’, which is the interface used for the Harmonised Database and is a portal from where one can access the trademark classification databases of each of the participating offices.
    3. Madrid goods and services manager (MGSM) The MGSM is a multilingual online tool and provides terms from the Alphabetical List of the Nice Classification as well as others that are pre-accepted by the WIPO and many IP Offices who are signatories to the Madrid Protocol.
  3. To claim use or to file on proposed to be used basis?Once the aforementioned points are ticked off in the checklist, it is identified if the proposed trademark has prior use in India or it is yet to be used.
      1. Requirements for filing application with use? In case the trademark is already in use, as per Rule 25 of the Trademark Rules, 2017 the application is to be filed with a affidavit of use along with cogent and corroborative documents which evidence the earliest date of use. While filing an application with use the following documents that are commonly used to establish the earliest and continuous use.
        • Invoices
        • Promotional materials like brochures, pamphlets, advertisements etc.
        • Articles and publications
        • Awards and accolades
        • Social media pages
        • Website extracts or
        • any other document evidencing the date of earliest use as well as continuous use.
  4. Requirements for filing an application on a propose to be use basis If the proprietor is yet to commence use then the of the trademark in India, the application is filed on a proposed to be used basis. The same does not necessitate any additional documents.
  5. Who is the authorised person to file the trademark application?
    An attorney or a trademark agent or even a proprietor can file the trademark application with the Trade Marks Office. However, one requires an agent code or a proprietor code as generated by the Trade Marks Office. The attorney or agent is to be authorised with a power of attorney authorising to act on behalf of the proprietor.
  6. What information is required to file a trademark application?
  • The trademark- whether a word or a logo/device
  • Identify the class of goods or services
  • Whether the trademark application is to be filed with a claim of use or on a proposed to be used basis
  • Name of the Applicant
  • Address of the Applicant
  • Email address of the Applicant
  • Legal entity of the Proprietor
  • Power of attorney- authorising the agent/attorney to file the trademark on the Applicant’s behalf

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