Can you file a trade mark application on your own and bypass a lawyer or a trade mark attorney? Certainly, you can. With advancing technology, the trade mark registry has also created a website where you can file trade mark applications online. Yes, you can also physically file a trade mark application but will not get the 10% discount that you would get on e-filing. Conducting a search of the register of trade marks has also become simpler and can be done online.
However, filing trade mark applications without the help of an experienced lawyer or attorney can be quite disastrous and is filled with risk.
You do not have the required legal knowledge
Although minimal details are required for filing a trade mark application such as the name, address and nationality of the applicant, the date from which the mark has been used, etc., you will require some expertise in selecting the goods/services and the class or classes in which they fall, which an experienced lawyer or attorney is skilled at.
Searching for availability
Before applying for a trade mark, it is advisable to conduct searches to ascertain whether there are any similar or identical marks on the register or in use. The trade mark registry has a search option on its website but it is difficult for a layman to understand whether a mark appearing there is similar and will conflict with the application. A lawyer or attorney, who is knowledgeable in the field, will be able to caution you as to which of the marks will conflict with your mark.
Descriptive marks or marks that are not registrable
It is advisable to carefully select a mark before filing the application. The law prescribes absolute grounds for refusal of registration for several reasons eg. a mark which is not distinctive, any mark that cannot distinguish the goods/services of one person from those of another or which describe the kind, quality, purpose, value, geographical origin or time of production of the goods/services, names that are scandalous, names which may hurt religious sentiments. Further, some names are prohibited under the Emblems and Names Act, 1950. This is not exhaustive and there are several other grounds for refusal. It is very difficult for a layperson to have knowledge of all this.
Mistakes, Delay and Additional Expense
Delays are a usual occurrence and it is usually on the part of the registry due to heavy workload. However, if you are not familiar with the process, the delay could be caused by you. If you select the wrong class, you cannot amend your application to change the class. Similarly, you cannot add additional goods but may only be permitted to delete some of them. For every amendment you are required to make an application and pay additional government fees. All this can delay the process, increase costs and affect your application. On the other hand, a skilled lawyer or attorney will avoid these mistakes and ensure that the application is filed properly and you save time and money.
If a mark conflicts with your mark, the registrar may refuse to accept your mark for registration and even if the registrar accepts it, any prior applicant may oppose your mark. Opposition proceedings take years to get disposed off and are costly. Your attorney will be able to advise you about this before taking a decision to file the application.