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Trademark Protection - Tips and Tricks to do it right

16th Apr 2013
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As the Indian subcontinent absorbs the burgeoning start-up / entrepreneurship phase, there is a pressing need for startups to be legally secured. Most startups are even unaware of the importance of protecting what they are creating through their blood and sweat. Legal security comes in various flavours. These include contracts, user agreements, end user license agreements, investor agreements, co-founder agreements, employee-employer agreements, registration of company, tax agreements, and the oft-neglected Intellectual Property Rights(IPR). In an earlier article we had listed 5 things about IPR that a startup should consider. This article is a primer relating to various types of IPR and mainly a compilation redirecting you to resources wherein an entrepreneur can begin to become self-aware.

This article will be presented in four parts for the purpose of brevity. This one will deal with trademarks.

Trade Marks - What to do? When to do? And Why?

A trade mark essentially protects a number of things listed here:

*Brand name and logo

*Product name and logo

*Company name and logo

*Website name and logo

*Application name logo, and the like names and logos.

It is a distinctive sign or indicator used by an individual, business organization, or other legal entity that the products or services it gives to consumers with the trade mark appearing on it originates from a unique source, and can be distinguished from other products and / or services of other entities. A trademark protects a name brand or logo that is used in a commercial application to distinguish one company from another. In India, protection of trademark is done under two statutes – namely the Trade Marks Act, 1999 and the Trade Mark Rules, 2002.

There are certain preliminary things even you can do at a personal level to check any trademark violation. Just checking with the Register of Companies is not enough! Even obtaining a domain name is not enough! Conduct a jurisdiction-wise trade marks’ search (most searches are free, if you know where to look). Here are few steps you can follow.

Do some free search

Check the Trade Mark Registry (for the country in which you wish to practice your trade):

1) To select your class:

http://ipindiaservices.gov.in/tmrpublicsearch/classfication_goods_service.htm

2) To conduct a search, class-wise, by inputting your text in different permutations and combinations:

http://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx

3) Search Portal, Singapore:

http://tmsearch.ipos.gov.sg/eTMSearch/eSearchOption.jsp

4) Look at the mark and corresponding goods and services that have been declared.

5) Conduct a thorough online search, because if an unregistered mark exists, it is still a dangerous territory to venture into.

6) Search Portal, USA:

http://www.uspto.gov/trademarks/process/search/

7) Besides the US and Singapore, search in foreign jurisdictions, too, where you intend to scale your business.

Always think global. Individuals and companies have spent tremendous amounts of money in legal fees in order to secure rights overseas, when they did not think globally (e.g. Parle in Australia, Hakoba in USA, Hilton in Mount Abu).

Take professional help

A trade mark agent or a trade mark attorney is licensed to represent a client before the State (Trade Mark Registry and Offices of that state).

What all can be protected

The following can be registered as a trade mark but a mark must be distinctive and capable of distinguishing your goods or services from other traders who have some similar.

  • letters
  • words
  • names
  • signatures
  • labels
  • shapes
  • colours
  • sounds

How to determine infringement?

Always be on the lookout for similarities in the market. These may be visual similarities for logo marks, phonetic similarities for word marks, literal similarities for word marks, and the like.

Gather evidence of dates of inception, use, continuous use(which means since how long has the said mark been in use), market size, market similarity, class similarity, goods and services.

Conduct an online search – Google it. Create news alerts.

Symbols

TM – when trade mark is applied for

® - when trade mark is granted

About the author

chirag
Chirag Tanna is a registered patent agent and Director at INK IDEE. INK IDEE is a leading Intellectual Property Rights' (IPR) boutique firm that manages all forms of IPR related queries, focusing specially on trademark and patents across various industries and sectors. INK IDEE also has a 'start-up' arm that diligently helps start-ups and entrepreneurs with IPR related advice and services, across the globe.

You can reach Chirag Tanna for any IPR related questions on the website www.inkidee.com, or at chirag@inkidee.com.

LinkedIn Profile: Chirag Tanna

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