Saturday, August 22, 2015

Problems With Self-Filed Trade Mark Applications

With the growing need for business enterprises to create and maintain a solid brand image, there is a sharp rise in trade mark applications being filed by the owners themselves. This marked increase in ‘self-filed’ applications is more prevalent in the small and medium enterprise (SME’s). Though this method might seem cost effective to many, creates a lot of complications in the long run.
The major problem faced by the owners opting for self-filed applications in the prosecution stage is the caused due to the applicants not opting for a pre-filing search. A search is extremely essential as it gives the proprietor an idea about the possible objections and oppositions which might come his way in the process of registration. Seeking professional help in this stage not only gives the owner an idea about the existence of any deceptively similar mark subsisting in the registry but also a professional’s opinion and suggestion on modifying or altering the mark in order to make sure it faces minimal deterrents in the passage of registration. Another grave problem with applications being filed by owners themselves is the lack of knowledge on the classification of goods and services, which results in applications being filed in the wrong class. The most common problem confronted by such applicants is the objection stage, where the Examiner of Trade Marks has to be satisfied with the reply to the objections under Section 9 and 11 of the Trade Marks Act, 1999. Drafting a reply to the objections, for a person who is not well-versed with the provisions and concepts is unmanageable. Now the most challenging part of the entire procedure, the Opposition stage. The Opposition stage allows a third party to challenge the mark proposed for registration after it has been advertised in the Trade Marks journal. The owner has no option but to call for professional help at this stage and chances are that the number of oppositions could have been pre-determined or minimized had the owner engaged an Attorney in the first place. The other problems encountered include missing the deadline to renewal applications, difficulty in filing amendment to alter details etc.
Hence it is advisable for business owners to seek professional help while laying the foundation for a brand they want to establish as it will not only relieve them of the burden and help them concentrate on other areas of business development but also pave a way to a  strong, stable brand with right professional strategies and approaches.

Poulomi Paul