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Often we read about how to file trademark application and how to respond to trademark objection etc. but we conveniently miss the due diligence and proper decision making that shall be done before deciding to file a trademark application.
We are aware that trademark registration in India gives the applicant or the proprietor monopoly to use the trademark in a particular class, so it is clear that your brand is not safe and secure in case the trademark application is not filed in the relevant class.
In this article we will try to understand how to decide the number of trademark applications required to be filed and how to select the most relevant class pertaining to the proposed trademark.
Let us proceed step by step.
Before zero downing the class, we shall ask ourselves the below listed questions.
What are my products and services?
What range of product I am dealing with?
Will I expand my product range in future?
Is my product and services pertaining to the brand name are similar or different?
Is my logo covering my mark clearly?
Is my logo is different from my brand name?
Let us understand this crucial decision making process by way of example.
Suppose you are manufacturer and trader of Pipes.
Now Answer to your first question What are my products and services ? is pipe.
For question 2 What range of product I am dealing with ? you may produce PVC pipes, plastic pipes, hose pipes etc.
You may also expand your product range in similar product lines such as hose rings, sprinkler system or garden sprinkler or any other watering equipment this answers Question 3 Will I expand my product range in future ?.
Some of your related product may fall in single class and some may not. For example all of your pipes and sprinkler system will be covered in single class that is class 9. But one of your products such garden sprinkler will fall in class 21 This answers Question 4 Are all your product similar or different ?.
So in order to safe guard your right over all of your product range associated with the brand , you need to file two trademark applications one for class 9 and one for class 21. And let us come to 5th question Is my logo covering my mark clearly?, most people have a symbolic logo or a stylized , graphical or unique representation of work mark itself. Most of the attorneys suggest to file only single application in case the logo is clearly mentioning the work mark.
Now in the given example you might protect you mark with logo in single application in case the wordmark is clearly visible within the logo itself as SWASTIC
But in case you have the mark as swastic and only logo as SWASTIC which is a symbol of swastic but do not have word swastic , you need to apply for two separate trademark applications in this case.
One for protecting the Logo and one to protect your word mark SWASTIC.
However, theoretically, one needs to file a separate application for Logo, wordmark, color etc. But in practice you may protect your word mark in case your logo is clearly representing the word in itself.
So in order to decide you need to finalize your product, your future expansion in terms of related products as well as your current logo , in order to derive the actual number of trademark applications you need to file for your trademark for its complete protection.
In case you have any query related to this topic, you may drop in an email at firstname.lastname@example.org or givs us a call at +91 9643340938
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