Role of a Trademark Lawyer Mumbai In Trademark Prosecution

Trademark prosecution is a series of interactions between a trademark lawyer and officials from a trademark office to complete the specified task. Here's what a trademark lawyer does.

A trademark is a logo that a manufacturer uses to distinguish his goods or services from those of other manufacturers. The logo could be a letter, word, number, symbol, or design. Words and images are the most common types of trademarks, but other distinctive signs can be registered as long as they can get represented graphically.

The market is crowded, and it isn't easy to distinguish oneself from competitors. Trademarks provide a welcome respite by assisting customers in locating their favourite brands.

Customers who see a trademark immediately know who they are dealing with and the company's reputation and are less likely to look for alternatives. So, hiring an expert trademark registration lawyer in Mumbai for trademark prosecution is very important.

Let's get in-depth and understand the roles of a trademark prosecution lawyer in India.

Trademark Registration

The trademark registration process is not tough. With just a few simple steps, as explained below, the manufacturer will have the necessary legal protection for his goods or services.

Trademark Search

A thorough trademark search is essential before filing for trademark registration, and registration is not guaranteed by uniqueness alone. A trademark search would inform the manufacturer of the validity of his mark, saving him money, time, and effort spent on trademark litigation.

An expert trademark lawyer can help you find a mark that has not yet been trademarked by anyone else.

Trademark Application Filing

After ensuring that the mark has not already been registered in the trademark registry, your trademark lawyer will apply to get your trademark registered in the trademark registry.

Application Examination

After filing a trademark application, the examiner reviews it for any discrepancies. The examination could take between 12 and 18 months. The examiner may accept the trademark unconditionally, conditionally, or object to it.

The trademark is published in the trademark journal if the application is unconditionally accepted. In the event of a conditional acceptance or objection, the application is notified and given one month to resolve the issues.

The trademark is published once such a response is accepted. If the applicant's response is not accepted, they may request a hearing.

Prosecution of a Trademark

The prosecution definition, in simpler words, means a third party opposing the registration of a trademark.

Once the mark is accepted, the application gets published in the trademarks journal and is open to opposition for three months after publication. As a result, anyone who believes the mark lacks one or more essential characteristics required for trademark registration may file an opposition.

If the opponent files an extension request, this period may get extended by one month at the registrar's discretion. The Act also states that any person with a personal interest may file an opposition to a trademark's registration.

Rules 47 to 57 mention the prosecution definition, the law and the procedure in opposition proceedings, which must be remembered when dealing with such proceedings. A person may file an opposition for any of the following reasons:

Section 9

Section 9(1) states that registration will get denied if the trademark lacks distinctiveness, is descriptive, or consists of marks that have become common in the trade. Similarly, registration shall not get granted if the trademark deceives the public, contains any matter likely to offend religious sensibilities, etc.

Additionally, under Section 9(3), registration shall not be granted if the trademark consists of a shape of goods mark and the shape of goods results from the nature of the goods themselves, or the mark alleged to be constituted by the shape of goods is required to obtain the technical result.

Section 11

Section 11 specifies the grounds for denying trademark registration. If the applicant's mark is similar to an earlier trademark or there is a likelihood of confusion between the two marks in the public's minds, registration will be denied.

Section 18

Registration shall be denied under Section 18 if the applicant's claim to proprietorship of the mark is false, the applicant's claim to a user is false, or the applicant has no legitimate intention of using the mark.

Role of a Trademark Registration Advocate

The trademark registration lawyer assists you in selecting an appropriate trademark while ensuring compliance with legal requirements, lowering the chances of your trademark application getting rejected.

The application filing has precise requirements that a trademark lawyer in India can easily handle. Aside from that, if there are any objections to the brand registration in Mumbai or elsewhere in India, the advocate will respond to the objection and provide an alternative. Their contribution to the prosecution of trademark applications is critical, and they also offer valuable guidance on the nuances of trademark infringement.

Simply put, a trademark registration lawyer puts things into perspective for you. They provide unwavering and expert assistance from the selection of your trademark to its registration. They assist in breaking down the long and tedious registration process while ensuring that you have your registered trademark at the end of the process.

Do You Have to be an Advocate to File for a Trademark?

One does not need to be a lawyer to apply for a trademark, and anyone can submit a trademark application. However, registering a trademark entails more than just filling out a form. To provide adequate protection for your trademark, you must thoroughly research, identify, and explain it. Furthermore, even after your trademark is approved, you must monitor it to protect it from infringement.

When you file a trademark application without the assistance of a trademark lawyer, your application may contain errors that will affect your trademark in the future. In some cases, these mistakes may result in your application getting rejected.

In other cases, you may not be aware of a problem until you later attempt to enforce your trademark. A trademark advocate can assist you in avoiding these types of mistakes so that your trademark is protected correctly.

Do You Need a Trademark Advocate?

The answer is dependent on your specific situation. Trademark lawyers have prosecuted numerous trademarks over the years. Because trademark registration is a legal proceeding with strict procedures and deadlines, a lawyer familiar with the process can handle it more efficiently than you can.

A trademark lawyer can:

Determine any issues that may arise with your trademark registration. A lawyer can conduct a more comprehensive trademark search.

Evaluate the strength of your trademark and recommend a strong mark.

Explain how you should use your trademark to maximise its protection.

Prepare and submit a trademark registration application per the Indian trademark rules and regulations.

Inform you of the likelihood of your trademark registration being successful.

Respond to issues that arise after submitting your application to the trademark office and assign them to an examining lawyer.

Assist you in future trademark enforcement.

A lawyer can assist you in monitoring new trademark applications or uses of your trademark and taking action to oppose or stop potentially infringing uses.

Typical Errors Made While Registering Trademarks Without Lawyers

The trademark registration process may appear simple, but the requirements can be complex. As a result, trademark owners may make costly errors that could have been avoided had the application been prepared or reviewed by a lawyer. Common errors include:

Choosing an Incorrect Filing Basis

Use of the mark in commerce and intent to use the mark in commerce are the two filing grounds. Many people choose the incorrect basis because they do not understand the distinction. This error can result in a registered trademark with little or no protection when you try to enforce it.

Providing an Incorrect Trademark Specimen

You must submit a specimen demonstrating how you use your mark in commerce as part of your application.

Choosing the Incorrect Trademark Class or Misrepresenting Your Goods or Services

To protect your trademark, you must select a class of goods or services and identify the goods and services you wish to protect. The classification system can be challenging to understand, and getting it wrong can result in your application getting denied.

In the end, hiring a lawyer to deal with an improperly prepared application may cost much more than hiring a lawyer to do it right the first time.

How Do I Locate a Trademark Registration Lawyer?

The most important decision when starting a business is to hire a trademark lawyer to protect your brand. However, finding the right trademark lawyer to assist you with brand registration in Mumbai can be difficult.

Numerous lawyers claim to be trademark specialists; however, they are not all actually what they claim to be. Here are some pointers to help you find the right lawyer for your trademark registration in Mumbai and other regions:

Inquire Around

Your business network is a wonderful place to start when searching for a trademark lawyer. Ask around, and you will receive great recommendations from your friends and family.

Conduct Your Research

Reduce your list of potential lawyers by reading online reviews and visiting their websites.

Interview Potential Trademark Lawyers

Once you've narrowed the potential trademark lawyer list to a few lawyers, set up interviews with them to learn more about their experience and the cases they have handled; conducting interviews will help you determine whether the lawyer can help you or not.

Ask the Right Questions

Inquire how many trademarks the lawyer has filed and how many have been successfully registered.

Communication Mode:

It is critical to understand how frequently they will keep you updated on the status of your trademark application.

Conclusion

Trademarks are becoming increasingly important in business conduct in the modern era. Trademarks have become an important part of the economy as the number of people choosing to start their businesses has increased at an unprecedented rate. While registering a trademark, you may or may not face trademark prosecution. If you do, you should get prepared to answer the prosecution with an expert trademark lawyer Mumbai on your side.