Trademark: what should I check before filing?

Most trade mark problems start before filing: a mark that is too descriptive, a conflict nobody searched for, or an application in the wrong name.

Have you searched for identical or similar marks already registered or applied for?

Section 11 allows refusal where an earlier identical or similar mark exists for the same or similar goods or services and confusion is likely.

AYes, we have searched BNo, not yet CI am not sure

Who you are changes the answer

A trademark belongs to whoever claims to be its proprietor, and the application, fees and risks differ by type of applicant. Find the card closest to you before you start.

Individual or sole proprietor

Any person claiming to be the proprietor of a mark used or proposed to be used can apply (s.18(1)). The official fee table has a separate, lower category for individuals, startups and small enterprises on the main application form, in both physical and e-filing columns; we do not quote amounts.

Check

Whether you are already using the mark and, if so, the date of first use and evidence (rule 25).
The current fee table on IP India's website.

Source: Trade Marks Act 1999, s.18 · Trade Marks Rules 2017, r.25 · IP India: Trade Marks forms and fees

Startup or small enterprise

"Startup" means an entity recognised under Startup India (or a foreign entity meeting the Startup India criteria and filing a declaration); "small enterprise" follows the MSMED Act medium-enterprise limits (rule 2). You can also ask for expedited processing on Form TM-M after you get the application number; the application is ordinarily examined within three months of the request (rule 34).

Check

That your recognition or classification is in place on the filing date.

Source: Trade Marks Rules 2017, r.2 · Trade Marks Rules 2017, r.34

Company, LLP or partnership

Apply in the name of the legal entity that will own the brand. If a founder files personally and the business uses the mark, you will need a proper assignment or a documented arrangement later. A registered mark can be assigned with or without goodwill (s.38), and the new owner records title on Form TM-P (rules 75-76).

Check

Who the proprietor should be, before you file.
That the entity exists and has the right to use the mark.

Source: Trade Marks Act 1999, s.38 · Trade Marks Rules 2017, r.75-76

Co-founders or related businesses wanting to co-own

Persons who use a mark independently cannot be registered as joint proprietors. Joint registration is allowed only where they are bound so that none may use it except on behalf of all, or for goods or services in which they are connected in the course of trade (s.24).

Check

Whether each person will actually use the mark independently.
A written agreement on use, quality control and enforcement.

Source: Trade Marks Act 1999, s.24

Foreign applicant

Every applicant must give an address for service in India with a postal and an email address (rule 17), and an applicant outside India must also give its home-country address (rule 15(3)). If no applicant has a place of business in India, the application is filed at the office covering the Indian address for service (s.18(3)). In an opposition, a non-resident party may be ordered to give security for costs (s.21(6)).

Check

An Indian address for service that you will monitor.
The office with territorial jurisdiction.

Source: Trade Marks Rules 2017, r.17 · Trade Marks Act 1999, s.18 · Trade Marks Act 1999, s.21

Not sure whether this applies to your invention?

The honest answer usually needs someone to look at your actual disclosure, your timeline and the prior art. That is a conversation, not an article.

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