Do’s and Dont’s
Launching a business means introducing oneself to lots of legal formalities. Many start-ups believe that the they have registered the company as per the laws under the Ministry of Corporate Affairs and no other business will be allowed to use a similar name. It is true to an extent that no other business will not be allowed to be registered with a similar name as per the Companies Act, 2013. However, the name of the business can still be used by others if trademark registration is not obtained. So, of all the legal formalities, the most important though not mandatory is to secure your Trademark.
What is Trademark
Section 2(zb) of The Trademarks Act, 1999 defines “trade mark” as ‘a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others’.
The Act has further defined ‘mark’ under Section 2(m) as “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof
Thus, in layman’s language trademark is a ‘brand name’. Brand is usually seen in the form of the company name (e.g. Hyundai/TATA), product name (e.g. Santro, Creta for Hyundai Cars, Safari for TATA cars etc), Logo (H for Honda and Hyundai in a different format and TATA). So whatever business you plan to start and/or the product you intent to sell and/or the services you intent to provide, you will do it under certain name and that name is every critical for identifying your business. This name makes your brand. Adopting the name seems to be easy. But this is actually not so, if there is any legal ramifications. As once you invest time , money and energy in creating the brand, the last thing that you want is that there is already a company existing under the same brand and has sent you a cease and desist letter to stop using that brand. This costly mistake can be avoided by taking proactive steps on the front end to ensure that you have all the rights to use the brand and it solely belongs to you. This can be done by ensuring the following DO’s AND DON’Ts: –
Criteria for Selection of a Trademark
Do not use descriptive words as trademark
Second common mistake mostly observed by a Start-ups in selecting a trademark is the selection of their brand name. They usually select a word that is descriptive of their goods or services. People select ‘SUGARLESS’ for providing substitute for sugar. People do this in the belief that the consumer will know straight away what the product is or the service rendered. No doubt, that it may be easier to market such products at inception but in a long run such trademarks are offered to it would be difficult to stop your competitors from using the same or similar trademarks. Descriptive trademarks are difficult to register and enforce.
So, we would suggest is to coin the trademark and make a word that has no direct reference to its goods. It is the fanciful and/or coined trademarks, that are afforded the broadest scope of protection against third-party use of the mark.
Do not use laudatory words:
Laudatory words are adjectives such as GOOD or BEST are not registerable for any goods or services since all traders should be equally free to use them in the course of advertising their products.
- Do not use Generic Terms
A generic term is a word or phrase that has become the common term associated with a particular goods and/or service to which it relates. Generic terms are not registrable. An example of a generic term is Xerox, escalator, SOCIAL NETWORK, SMARTPHONE.
- Do not use the name of any geographic location
Do not use name of any geographic location or places. E.g. Chambal’ is the name of river which flows through the ‘Chambar ravines and as such it is a geographical name to which one cannot claim exclusive right.
- Following are Non-Registrable Marks
- Marks that mislead or tends to cause confusion to the public.
- Marks consist of subject matter that hurt the religious senses of any class or sections of the Indian citizens.
- Marks that contain improper or vulgar subject matter.
- Marks that are banned under the Emblems and Names of Prevention of Improper Use Act, 1950.
- Marks of the goods whose shapes are directly obtained from the nature of the goods.
- Marks of the goods whose shapes are important to acquire a technical result.
- Marks that are similar in identity to another good or product.
Post selection requisites
- Conducting trademark searches
A trademark public search is available in the Indian Trademark Registry online database. The search determines whether a proposed trademark is available for use in relation with certain goods or services. In the trademark search India, similar word marks as well as phonetically similar names and all other possible combination of words, that results in the same or similar sound in a specific class can be comprehensively searched. Choose another brand name, if after conducting the search, you find that there exists a similar sounding word already on record, try to choose another brand name.
- Selecting proper description of goods/services
The most common mistake people make while filing for trademark application, is writing a wrong good/service description. There are 45 classes provided by Indian Trademarks Law. The classes are divided as per the goods and services. The first 35 classes are goods and the last 10 classes are the services. India follows the 9th edition of the NICE international classification system. Identify your goods and services and always check the exact language that is given under nice classification, select the words and description accordingly.
- First Use of Mark
Claiming the correct date of first use is very important. The marks which are not is use and are filed on proposed to be used basis or the mark is in use since an earlier date, or whose use is restricted to certain items in the specification of goods or services, the claim for use should be appropriately made. An invoice showing the use of goods/services by way of sales and/or promotional expenses should be maintained and produced when required.
- Apply for the trademark:
Though filing trademark may not be mandatory, it is advisable to get your trademark registered as early as possible to provide the desired protection. Unregistered trademarks do not have the right to file cases of infringement. Therefore, to avoid any infringement action, it is recommended to register at the earliest.
POST REGISTRATION PREREQUISITES:-
- Don’t stop using the mark.
If you stop using the mark for continuous period of 5 years, then any aggrieved person may file a petition for the rectification of registration for the removal of the registered mark from the trade register.
- Ensure proper renewal
The registered trademarks remain valid for a period of 10 years which is calculated from the date of filing of the application and in case of convention application, from the date of priority. Hence the proper renewal process for the trademark should be followed and the trademark should be renewed from time to time. As non- renewal of trademark may lead to abandonment of your trademark. If the trademark is abandoned, there is no other option but to make new application for trademark.
- Use proper symbol
Most importantly, don’t Use the ® symbol until your trade mark has been registered. Use the TM symbol instead.
- Monitor the trademark
Last but not the least, after your trademark is registered, trade mark owners need to be vigilant to ensure that their trade marks are not being used (-or abused) by third parties. It is very important to keep monitoring the others trademark in the market and checking the Trademarks Journal as it will notify you of any other mark applications, you may wish to oppose.