The process of filing a trademark in India seems elementary, but there are several technical problems that can delay, object to, oppose, or completely deny the filing process. Here is a list of the most frequent and detrimental errors that applicants tend to make, along with reasons why these errors are significant, the real-world consequences of such errors, and alternative actions to take.
Common Mistakes to Avoid When Filing a Trademark Application in Chennai
1. Lack of proper clearance/availability search
- Reason: The Registry only checks formalities and obvious conflicts, whereas most applications are refused or opposed afterwards because of an earlier – identical or confusingly similar – mark.
- Consequences: Your application could be objected to under sections like section 11 (similarity) or opposed after the advertising stage. The fact that you filed your application in Chennai does not mean that the marks that are registered elsewhere in India will not be considered.
- Solution: Carry out a full search, consult resources like IP India, Google, business directories, domain names, and common law sources such as marketplaces and social media. If a search uncovers something similar, consider rethinking the mark or opting for a different class/scope.
2. Selection of a mark which is descriptive, generic, or appears nondistinctive
- Reason: Descriptive marks (for example, “Fresh Juices” for juice) cannot be registered unless they gain distinctiveness through extensive use. The Examiner will object for lack of distinctiveness.
- Consequence: Denial or protracted and expensive evidence-of-use proceedings to prove acquired distinctiveness.
- Solution: If you apply to register a descriptive term, choose fanciful or arbitrary marks – coined phrases or highly stylised logos – or be prepared to prove long and continuous use along with evidence.
3. Filing in the wrong class or using a vague/wrong description of goods/services
- Reason: India follows the Nice classification, and one class is treated as one filing fee. An incorrect class or wrong wording may render the protection ineffective or invite objections. Applicants often claim either too little or too much for goods and services.
- Consequences: Unclaimed goods have little protection, can be refused, and cannot be enforced.
- Solution: Associate real and planned business activities with specific Nice class(es). Use class-specific language (not “all kinds of things”), and if you are not sure, file it in multiple classes where you will use it.
4. A specification that is poorly worded, overbroad or underbroad
- Reason: Applications that are too broad engender opposition from incumbents; applications that are too narrow may not cover your real business.
- Consequences: Enforcement is limited; future revisions may be constrained.
- Solution: Use specific product/service words, give examples only if necessary, and consider future business goals. Use “ready-to-eat vegetarian snacks” instead of “food products.”
5. Confusing word mark versus device mark (logo) strategy
- Reason: A word mark will protect text in any font, while a device mark protects only the specific visual. Too many applicants submit just a logo and then regret the lack of protection in another font or plain text.
- Consequences: A simple workaround for infringers, they use the same term in multiple styles.
- Solution: If the logo has distinctive components you wish to protect, apply for both a word mark, core brand name and a device mark/logo.
6. Applicant detail errors or inconsistencies
- Reason: Mismatches like trade name vs. legal name and different addresses incur objections, delays, or corrections/rectification.
- Consequence: Registrar may demand proof; rectification later is time-consuming and sometimes discretionary.
- Solution: The application should be filed in the name of the legal owner in his/her proper name, firm, LLP name ,with an address and proof of incorporation documents. In case of companies, the incorporation documents also need to be attached with the application.
7. Poor or lack of supporting documentation/inaccurate application form filing
- Reason: Clerical errors are common and easily avoided: wrong class code, illegible logo, incorrect fees, and unsigned/unauthorised forms.
- Consequence: objections on formality grounds are even treated as abandoned.
- Solution: TM-A form fields should be revised; a high-resolution logo needs to be uploaded, the correct fee options should be selected (between e-filing and physical), and proper signature or POA requirements should be followed.
8. Failing to claim or prove the correct date of first use or priority
- Reason: If you claim a priority based on earlier use or under Convention priority, either with incorrect dates or without the proper priority documentation (like a priority certificate), this might threaten your rights.
- Consequences: Disputes over who used it first, hence possible refusals.
- Solution: Keep on file contemporaneous invoices, advertisements, website screenshots and certifications. If a foreign priority is claimed, provide a certified copy of the foreign filing within the priority period.
9. Failure to respond to examination reports or oppositions on time
- Reason: The Registry has strict timescales for response, usually 30 days to respond to an Examination Report with the option to pay for extensions in some circumstances and two months to file a counter-statement to an objection, with limited provision to extend this. Failure to comply with the timescale will result in abandonment.
- Consequences: It may be treated as an abandoned application or, in certain cases, you will have to apply for restoration or condone the delay, which is more expensive and uncertain.
- Solution: Monitor the IP India portal, mark necessary dates in the calendar, and file responses without much delay. If an objection has been raised, then start drafting your response as soon as possible rather than delaying it.
10. Poor or untimely reactions to the issues, a lack of proof, or weak legal arguments
- Reason: A superficial response seldom convinces the examiner. Sometimes, only legislative arguments will suffice, along with comparative charts illustrating the differences, and other times, responses call for documentary evidence.
- Consequences: Rejection or prolonged hearings.
- Solution: Prepare fact-based responses in the form of side-by-side comparisons, affidavits of use, marketing and sales documents, or negotiate coexistence where appropriate. Engage qualified legal counsel to respond to difficult objections.
11. Underestimating the risk of opposition following publication in a journal
- Reason: Even accepted applications are advertised — any third party can file opposition within 4 months of publication, and oppositions can be long and aggressive.
- Consequence: Prolonged disputes, costs, and time.
- Solution: Keep proof of prior use, monitor the Journal after acceptance, and consider settlement/coexistence discussions early.
12. Using exclusively low-quality, generic online services without prior verification
- Reason: Cheap platforms may not do proper similarity searches, might misclassify products, or provide the wrong specifications.
- Consequence: Possible future invalidation or inability to enforce.
- Solution: Where an online filing portal is used, request a search report and a human assessment by an IP professional.
13. Unduly delaying the registration of assignments, licences, or changes in ownership
- Reason: Failing to record changes with the Registry after a sale, license, or merger can create discrepancies when the mark is later enforced.
- Consequences: Disputes on who has standing to sue arise, as well as evidentiary challenges.
- Solution: Assignments or changes should always be made out on Form TM-P or other forms prescribed for that purpose.
14. Making incorrect or false claims of colour, holographic, or 3D characteristics
- Reason: Colors or 3D shapes are limiting in scope, and the likelihood of objections is high, unless justified.
- Consequences: Protection becomes limited, and examiners may object for lack of distinctiveness.
- Solution: Only claim color if the color combination is a distinguishing feature of your brand, and give exact examples of the colors.
15. Neglecting post-registration: renewals, surveillance, and enforcement
- Reason: Registration doesn’t mean the end of a process. One needs to re-register every ten years, monitor for infringers, and enforce rights in a timely manner. Most companies mistakenly consider the view of registration as “set and forget.”
- Consequences: Expiry of protection, re-registration and dilution of third-party rights.
- Solution: Set up automatic renewals/alerts, subscribe to a trademark watch, a service that monitors for similar filings, and develop an enforcement policy.
Pre-Filing Checklist For Chennai TM Applications
- Full clearance search: word, logo, phonetic, domain name, and social media.
- Verify the exact entity/legal name with documentation to support it.
- Goods/services should be correctly classified under the applicable Nice class(es).
- Determine whether to apply for a word mark, device mark, or both.
- Evidence of use, including invoices and advertisements, if any.
- Keep high-resolution copies of logos and don’t claim extra colors.
- Submit your application through the IP India e-filing portal and make a note of your application number.
- Provide a timeline for responses to examination reports – 30 days, monitoring of journal publications (opposition – 4 months), and renewals – every decade.
For Objections and Oppositions
- Keep calm. Read the Examination Report carefully; it is a legal document containing legal provisions and explanations.
- Based on legal reasoning, prepare a response with supporting evidence, such as affidavits and mark comparisons.
- Prepare a response with evidence of prior use or secondary meaning, and do so quickly, as timing can be very strict.
Final Practical Advice (Chennai)
- Any ambiguous issue should be taken up with an experienced Indian trademark attorney. A good pre-filing opinion can save costs rather than the fee paid.
- If you are a start-up or a small business and have budget constraints, consider filing a word mark for the primary brand name in the most pertinent class(es) first; you can always add device marks later.
- Keep records of the first use, such as date-stamped invoices and website timestamps, in support of any potential disputes.
- Post-registration monitoring should be done on a monthly or quarterly basis for new filings and for online infringements to avoid costly litigation.
Related Services
