How to assist an IP client for filing a trade mark application?
Have you recently started your IP practice? If yes, then this post might be helpful for you to address few basic queries that your client might pose to you.
Running your practice has more to do with business skills than applying law to the matters you receive. Handling clients is a skill and holding them all along while carving out ways to extract money from them is an art. At least that is what I observed and experienced. If you know this art, let me tell you even a pandemic like COVID-19 cannot affect your billings!.
Understand the Chronology!
On the theoretical side, Section 18 of the Trade Marks Act 1999, lists down statutory requirements of filing a trade mark applications, however the present post aims to throw light on the practical side of filing a trade mark.
There are few standard questions that you need to ask your client’s once you have received instructions from their end to go ahead with filing their trade mark applications. As a professional it’s quintessential for you to understand and be able to comprehend the “instructions” recieved, whether it be from your clients or your seniors.
Small fact with a big impact — As a professional you have a carry a price tag on your forehead and your time is what yo charge your clients for. You are a resource person and there is cost attached to you, therefore you can neither do less nor more than what you have been directed to do.
Recommend and ask the following to your client in your next email —
STEP ONE:
I) Public Search — Based on the description of services of your client, you are expected to determine and inform the following two to your client:
(i) Relevant Class of the Trade Mark (ii) Description of goods and services
Once you have determined the above two, you should recommend your client to get a public search conducted in the relevant classes in which the goods and services of your clients fall in order to rule out any possibility of a conflicting mark already existing in the register.
Disclaimer is a must — Never forget to insert a disclaimer at the end of your public search report stating : that the searches being from the online records of the IP office of India(or any other jurisdiction), which are entered manually and are not updated regularly, therefore chances of fallibility cannot be ruled out.
II)Prior User or Intent to use?
The trade mark application can be filed with either of the two sets of information:
Prior User — If your client has been using its trade mark from a date prior to the date of filing the application, that relevant date (any specific date)is required to be mentioned in the trade mark application. However, you need to inform your client that the date being advocated from their end should be backed by an evidence to support their claim.
This is because Rule 25 of the Trade Mark Rules 2017 mandates the proprietor claiming prior use of its trade mark to file an affidavit attesting the date of first use along with the supporting evidence at the time of filing the trademark application(s).The evidence may be in the form of pamphlets or any sort of promotional activities, marketing campaigns, proof of launch of the mobile App etc.
Intent to Use — In case your client would be using the trade mark pursuant to filing the application, then the same can be filed on the “proposed to be used” basis.
III)Nitty Gritty’ s of filing a Trade Mark Application
Before proceeding to file an trade mark application, you need to have the following information handy with you:
Name of the Applicant, Nationality of the Applicant, Address of Applicant, logo (A high resolution image — recommend a black and white image since that will provide a wide protection without restricting it to a specific color combination), Power of Attorney (Refer Section 145, Trade Marks Act, 1999 and Rules 19 Trade Mark Rules 2017).
Note: i) POA has to be filed along with a stamp paper of Rs 100.
ii) In case you wish to file the trade mark application online, you need to have your digital signature.
Once you have covered all the three pointers mentioned above, you send an email to your client along with your cost quotes. The government fees of filing the trade mark application can be found here.
STEP TWO:
Post Filing Formalities — Reporting emails are necessary.
Writing an email to your client and keeping them update with respect to every development in any matter is one of the essential practice across law firms.
In case you are an independent lawyer, a call to your client and informing them of the update might do the job in India.
Now, once you have filed the application, you are required to draft an email informing your client, the Application No. of their trade mark along with other necessary details. It’s a thumb rule to always inform your client of the next steps as well while reporting any development. So while reporting you can add a paragraph stating that:
“The application will be examined on absolute and relative grounds of refusal, which might take around 2–3 months. Once the examination report is issued by the Registry, a period of one month would be granted for filing the response. On completion of the examination process, the application will be advertised in the Trade Marks Journal, and following the expiry of the opposition term (i.e. four months from the date of availability of the Journal to the public), the application will proceed to registration”
Conclusion
Once you have sent the reporting email, then you do from what you might derive the maximum happiness — you raise the invoice!. Will soon try and come up with the next segment of practicalities existing in the trade mark and copyright law.
In case you want me to address any specific issue you can send an email at — harshit9281@gmail.com.
