Deciding on a Trademark - What to keep in mind

Making decisions at a growing business are tough and often have repercussions for which Entrepreneurs might not be prepared for. One of the most important part of any business is Intellectual Property Rights of the concern. As most of the businesses work online, the name of their concern as well as different product or services are the only thing with which the consumers identify them and thus become the most economically important aspect of the business at later stages.

Trade marks, trade names as well as trade dress; as valuable as they seem to be, are also vulnerable to be infringed by unscrupulous traders in the course. That means that getting your rights registered do not guarantee that they would be protected, an entrepreneur has to be extremely diligent in prevention of misuse of their most valuable assets. So, if you think registration absolves you from the difficulties that might occur to protect  the trademark you chose: think again.

Creative Commons License: Image taken from here

There are several aspects that one must consider (if one wants to avoid subsequent litigation and enormous wealth going down the drain), to build a brand. If you are at the brand new idea stage, rejoice: As I am attempting here to warn and coax you into developing a brand which to put it simply, does not put you through building-it-and-protecting-it vicious cycle again:

I am starting a new business and while choosing a trademark, what should I keep in mind?

According to the law in India (Trade Marks Act, 1999) trademarks should have the following features:

- Should be able to be represented graphically; like words or combination of words, label, image etc.

- Should be able to distinguish goods of one person from goods of another: This is the tricky part. For the sake of business you would be tempted to either explain what your goods or services are, but at the same time you are supposed to make your mark distinguishable from the other marks, both existing as well as future.

-Should not directly describe your product.

Please note that the good (and probably frustrating) thing about these is that there could be valid exceptions to this criteria.

Apart from words, which other graphical representations can I use to form a Trademark?

A trademark may be:-

- a word

- a logo

- symbols

- a picture

- the shape of your goods

- packaging of your goods

- combination of colors

- a sound mark

-Combination of all/either of these

It should be noted that registration of non-traditional trademarks like color or sound etc are at the stage of infancy in India and might take more time to get registered.

Are there any trademarks which are prohibited?

Yes, there is a list of trademarks called International Non-proprietary Names (INN). According to WHO:

“International Nonproprietary Names (INN) facilitate the identification of pharmaceutical substances or active pharmaceutical ingredients. Each INN is a unique name that is globally recognized and is public property. A nonproprietary name is also known as a generic name.”

As INN are public property, they cannot be appropriated by anyone.

Also, a prior adopted and registered trademark of the same class cannot be registered again.

One more useful tip is to stay away from Well-Known Trademarks (WKTM). These are those trademarks which have been in use for a reasonably long time and have an enviable reputation among the competitors. If you try to incorporate in your Trademark these names, you would be looking at a long, long litigation period and drainage of resources.

Pro Tip: You would lose more money by the nasty litigation/negotiation process than you will ever earn  riding on their goodwill. I am not counting the wastage of time here.

These are a few Trademarks which have been held by various courts in India as WKTMs:

1. Toshiba
2. Tata
3. Rolex
4. Mahendra & Mahendra
5. Sprite, Thums Up
6. Clinique

This list is just for reference and is not exhaustive.

Also, just because a foreign brand has not entered Indian market, it does not mean you appropriate them. The Courts are very unkind towards Trademark and Domain Name squatters.

How can I search for similar registered Trademarks/ applied trademarks in India to prevent unnecessary trouble in registration process?

To check for the class in which your goods/services fall as well as search for the application/registered Trademarks, you may go to this link: http://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx and put in the details of the trademark you wish to search for. This link also has a list of classes of goods and services. It is advisable to search for the same mark in different spellings as well as phonetically similar sounding trademarks when you search so that you can come up with a truly distinctive trademark and build it from scratch.

How much time does it usually take to get a Trademark Registered in India?

There are a few stages after which a Trademark is registered in India. These are discussed in another post of the blog here. Though it is difficult to give a time frame, it is possible that your Trademark to get registered in two years time.

Although recommended, it is not necessary to hire a Trademark Attorney for registration. Use the blogpost linked above to prepare yourself for the purpose. Good luck!