5 things to keep in mind while filing for Trademark

When Shakespeare asked “What’s there in a name?” he probably had no idea how important that question would be in the future. In today’s times, fighting claims for originality and exclusivity to a simple name can cost you a fortune. Hence, it has become important to get a Trademark for your brand name and protect your brand from any kind of infringement or misuse.

As per Section 2 of the Trade Marks Act, 1999, a Trademark is a mark that distinguishes the goods and services of one company from another. Trademark can be anything from a symbol to a label or a logo.

Trademark registration gives the legal right to the owner to use the name, logo, symbol etc. as the identity of the business. Further, it provides a clear picture of your company to customers and helps associate your brand name to a product/service and build a strong consumer base. For example, the word ‘Cadbury’ is commonly used for a chocolate, however, Cadbury is the name of the multinational company which sold milk chocolates and today, due its widely used and unique name, globally people interchangeably use Cadbury for a basic milk chocolate. 

The Trademark Registration in India is regulated by the Ministry of Commerce & Industry, Controller General of Patent Design and Indian Government.

Before the process of Trademark registration is initiated it is important for any businessman to know certain crucial aspects about the Trademark registration. We have put together the top few points that you should know before you begin the process of registration.

1. What can be trademarked?

The first step is to understand what can be trademarked and what cannot. A  wordmark (a combination of words only and not limited to a certain font, design, style, colour and includes a tag line), device mark or logo (symbolic or iconic representation of a brand in a predetermined style and pattern). Even a unique sound mark associated with a brand or a new colour/ shade of colour can be trademarked.

2. Which are the types of Trademarks

Goods marks and Service marks are the two broad categories for trademarks. There are a few types of Trademarks based on the type of goods/services provided by the business which are – Product marks which are marks on products or goods which facilitate the customers to determine the tangible product with ease, Service marks to register services. It enables the customers to recognize a particular service from its Service mark. The applicant needs to choose the appropriate class from the notified classification to register a Trademark according to the nature of its products/ service provided. An applicant can choose to register the same product/ service under multiple classes.

3. Choose a mark which is protective

Before applying, the applicant must ask the question - is my mark too common and generic or directly descriptive of my product/service? It is essential to keep in mind that the brand name, logo is unique and easily identifiable yet not too generic in order to avoid any issues arising due to it being similar to any common words or other brand’s name or logo etc. and yet protects the applicant’s brand from infringement. The more unique the mark is, the faster will be the registration process and lesser will be the risk of objection from the Registry or opposition from someone else claiming similarity.

4. Check for similar marks and the availability of the chosen mark in the specific class

Since each Trademark is filed in a specific class based on the goods or services the business is providing to its customers, it is essential to ensure that no other Trademarks are registered in the same class which are similar to the ones you are intending to file for. Running a preliminary search in the database to check for any such similar trademarks in the same class in the database becomes essential as it can be a reason for the rejection of the trademark by the registrar. If there are no such marks already applied for/registered in the class, it shall be advisable to go ahead.

5. The cost involved

The cost involved in filing the Trademark application varies on the basis of the type of entity which is applying for such a mark. If you are an individual, small enterprise or a start-up then you will be required to pay INR 4,500 for e-filing of the application under each class, and in case the applicant is any entity other than a start-up, small enterprise or an individual, the application fees is INR 9,000 for e-filing under each class.

Once a mark is registered, the registered trademark protection is available for up to 10 years from date of application. The proprietor of the mark must apply for renewal before the lapse of ten years, otherwise the mark will be considered abandoned/ removed and can be applied for someone else. However, the renewal process may be initiated only within one year before the expiry of the registered trademark. However, in case the proprietor of the registered mark fails to renew the registration within one year before expiry and the mark is removed, the trademark registration can be reinstated through what is known as the restoration of the trademark in the prescribed form.

Conclusion

Trademark in India is an efficient tool to gain a competitive edge over other businesses of similar nature. Apart from giving a unique identity, filing for your Trademark comes with a package of advantages which can be beneficial for the business in the long run. To name a few: greater brand image, product differentiation and identity and most importantly legal protection against infringement.

In case you need any legal assistance in Trademark Registration, Treelife Consulting is a one-stop solution for you.

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Disclaimer
The contents of this article are for information purposes only and do not constitute advice or a legal opinion and are personal views of the author. It is based upon relevant law and/or facts available at that point of time and prepared with due accuracy & reliability. Readers are requested to check and refer to relevant provisions of statute, latest judicial pronouncements, circulars, clarifications etc. before acting on the basis of the above write up. By the use of the said information, you agree that the Author / Treelife is not responsible or liable in any manner for the authenticity, accuracy, completeness, errors or any kind of omissions in this piece of information for any action taken thereof.