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
