1. Select your trade mark
The main challenge is in selecting the right trade mark for your product or services.
Follow certain rules whilst selecting the mark:
i. The mark should be short and memorable
ii. It should not describe the goods or services
iii. Choose words that are fanciful or arbitrary
iv. It should not be similar to any other mark already in use
v. Avoid surnames
vi. It should not be such that it deceives the public or causes confusion
vii. It should not hurt religious sentiments
viii. It should not contain scandalous or obscene material
ix. Marks may also be suggestive but not descriptive or generic of your goods or services
2. Search for conflicting marks
Before filing the application it is advisable to take a search of the records of the trade mark registry to look for any marks that are identical or similar to your mark. It is also advisable to do a general search on the internet to avoid conflict with another persons mark.
3. Select the classes in which you want to register the mark
There are in all 45 Classes our of which 34 are in respect of goods and the remaining are in respect of various services. Different goods and services fall in different classes. You must select the class to ascertain in which your goods or services fall. The goods and services are classified into various classes.
If your goods or services fall in more than one class you will have to make separate applications for those classes or file a multi class application. Separate fees have to be paid for each class whether it is a separate application or a multi class application.
4. Have you used the mark?
You can use a trade mark even if you do not register it. You can establish what are known as “common law rights” by use of the trade mark. Generally, the first person to use the mark gets a better right to it. Disputes arise if more than one person claims common law rights in a trade mark. Registration of a trade mark gives you additional “statutory rights”. If you have not registered the trade mark but are using it, you may use the symbol “TM” to indicate that it is your trade mark. After you have registered it you can use the symbol ®. Registration is a constructive notice to the public of your rights in the mark. Once registered, you can file an action for infringement against persons misusing your trade mark. You can also register your rights with the Custom Authorities to prevent illegal import of counterfeit products into the country.
5. File the Application
After you have selected the mark, selected the classes and completed the necessary searches and found that your mark is registrable, you may apply for registration of the trade mark. You will be required to provide details of your name, address, legal status, image and description of the trade mark, first date of use, affidavit of use with evidence of first use and other details.
Steps after filing the Application:
i. Examination by the Registrar
ii. Issuance of an Examination Report
iii. Reply to the Examination Report within 30 days
iv. Acceptance of the trade mark or Show Cause hearing
v. Acceptance or refusal of the application after the hearing
vi. Advertisement in the TM Journal
vii. Registration if not opposed in 4 months
To keep the mark alive, it must be renewed every 10 years.
