How to, do a trademark search/ avoid the scary lawyer letter [infographic]

If you have a unique idea you would surely like it to look just that. This is a very rational desire to have. This is where trademark comes into play, as having a unique trademark not only sets you apart from the rest but allow saves you from getting cheated. But, you need to be cautious enough to have a truly unique trademark that doesn’t resemble or borrow from any other pre-existent one’s because doing so will leave you exposed to a lot of trouble in the form of trademark infringement lawsuits.

One such example is the Make My Trip – TATA arbitration. In 2009, the Gurgaon based travel portal was forced to shut down its online forum called OkTataByeBye.com. World Intellectual Property Organisation (WIPO), Geneva, instituted by Tata Sons, contended that the domain name was confusingly similar to ‘TATA’ brand and therefore MakeMyTrip did not have any right to use the domain as the use of word ‘Tata’ constituted trademark infringement.

The debatable nature of the dispute set aside, it is surely an instance to learn from for all business owners, specially, startup founders. So, dive in to learn how you can keep your uniqueness intact.

What is a Trademark?

In today’s homogeneous, competitive world, if you have to thrive as a business, you must distinguish your products and services from the rest of the market, ie, give them a distinguishing feature that sets them apart from the crowd of similar faces. A product or service with no unique identification may not be as successful as it could be with a different brand as it is bound to get lost in the crowd.

A trademark is a distinctive sign or indicator of some kind that helps in unique identification of source or the brand of a product or service. It helps a company in distinguishing its products or services from others. It is a ‘brand’ or ‘logo’. A trademark is like that distinguishing feature that makes you unique and set you apart. They are protected by intellectual property rights.

But why is a trademark so important for a business, especially startups?

Since a trademark helps in distinguishing your products and services from your competitors, it helps develop and protect your goodwill. More importantly, it protects your brand. If you register your brand name as a trademark you will receive a statutory right to protection of that name throughout the whole country regardless of your reputation. Here are a few reasons trademark registration is the first thing you should do when starting a business:

Trademark makes it easy for customers to find you – Your trademark is what makes you shine like a diamond in a roomful of crystals. They are an efficient commercial communication tool to capture customer attention and make your business, products and services stand out. They guarantee instant recognition and ignite feelings of trust in customers.

Trademarks are assets – Trademarks manifest into value over time. Trademarks can lead the way for expansion from one industry to another, such as from clothing to travel. Trademarks are similar to real estate in being property assets, that can be bought, sold, licensed (like renting or leasing) or used as a security interest to secure a loan to grow your business.

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Trademarks don’t expire - Trademarks do not have an expiry date and can exist for as long as 10 years. It is a one-time hassle that leaves you secure for a long time in the future.

Trademarks make hiring easy - Brands can inspire positive feelings of trust in people’s minds which makes your brand irresistible and desirable to the new age employees. A well-established brand status guarantees the inflow of the most talented employees eager to be a part of a trust brand.

‘Apple’, ‘Xerox’, ‘Microsoft’ are some examples of successful trademarks trusted by all. However, as a new entrant in the market, a startup founder must do a comprehensive trademark research to ensure that he/she is not infringing on another company’s trademark. Trademark registration may be denied in case it resembles the proposed mark to an existing one or prohibited one. 

How to find if you are infringing a trademark?

For running a trademark search in India, one may use the online search database of Comptroller General of Patent Designs and Trademarks. The online database can be accessed here. The database is easy to use and can be used even by a layman. But for that, you will need to know the class of your product.

You would have to enter a ‘keyword’ and the class of your product. This ‘keyword’ is ‘the first few alphabets of your trademark’. The law has classified products and services in different classes. You can find your product’s class here. For instance- The trademark number for clothing, footwear or headgear business is 23.

The Comptroller General’s Office supervises trademark registration and other related regulatory matters in India. Its main task is to register trademarks which qualify for registration as per provisions of the Trade Marks Act and Rules, and to maintain the Register of trademarks. It also acts as a resource and information Centre and is a facilitator in trademarks related matters in the country.

Apart from using the online database, you may also request the Registrar for an opinion on the distinctive character of the mark. However, such opinion or report is not binding.

Apart from using the online database, you may also request the Registrar for an opinion on the distinctive character of the mark. However, such opinion or report is not binding.

The two essential qualifications for trademark registration are:

1. It must be capable of being represented graphically,

2. It must provide for distinguishing the goods and services of one person from those of another.

Therefore, a trademark which is either identical with or similar to an earlier trade mark cannot be registered. For instance, an application for trademark ‘Venus’ for chocks for fluorescent tubes was refused on ground that ‘Venus’ mark was already in use in respect of water heaters and coolers and was in existence from 1961.

Any wrongful or unlawful use of a trademark by someone other than the registered authority is qualified as trademark infringement. Even a deceptively similar mark, if not identical, may lead to trademark infringement. This is so because a registered trademark gives the registered user exclusive rights to enjoy and exploit the mark. A recent example of this is the dating app ‘Tinder’ alleging trademark infringement against ‘3nder’, an independent app for non-monogamous couples.

Even though it is not mandatory to register your trademark, it is advisable that you should get your trademark registered. Registering your trademark will give you exclusive rights and protection against future infringement.

How do I register my Trademark?

You can file your application for registration in the Trademark Office under whose jurisdiction ‘your principal place of the business’ falls. In case, your place of business is outside India, your should file your application in the Trademark office under whose jurisdiction the ‘office of your lawyer’ is located.

You can find a lawyer on Lawyered to ask a question related to filing of trademarks.

As discussed above, it is extremely important to conduct a trademark search to avoid a conflict with already registered or prohibited marks. 

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You must ensure that your mark does not hit any of the below mentioned conditions-

1. Causes confusion,

2. Devoid of distinction

3. Consists exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade. 

4. Hurts religious sentiments,

5. Is obscene

6. Uses national emblems or any other marks which are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950. 

Given below is the list of factors which would determine the fate of your trademark application-

1. Whether your mark would take unfair advantage of an earlier trade mark?

2. Whether your mark would be detrimental to the distinctive character or repute of earlier mark?

Usually, a trademark registration process takes place in the form of following stages-

1. Examination by registrar

2. Communication of objections, if any. The objections may be regarding distinctive character of your mark or similarity with an already registered Trademark.

3. Hearing stage.

Once your application is accepted, your trademark will be published in the Trademark Journal. Since it is an important process, it is necessary that the public is given a notice of your application. This ensures that the trading public whose rights might be adversely affected by your mark’s registration gets adequate opportunity to voice their concerns. In case the application is not opposed and the relevant time period expires or the opposition is decided in your favour, your trademark will be registered.