Trademarks are valuable assets owned by Companies, which not only play a very important role for your business (as discussed here in my earlier article) but also add value to your business. However, it is equally important to understand that if the trademarks are not chosen wisely or are not protected or rights are not enforced they can also become cause of legal troubles for you.
As a business owner/trademark owner it is important that you are aware of certain basics of trademark and the law governing it. In this article I have tried to capture few trademark basics which I feel every business owner/trademark owner should be aware of to avoid legal troubles and attached financial losses. This article is primarily concerned with Trade Mark law in India. Listed below are few of the trademark basics that you should be aware of: -
1. Clearance check
Before adopting a new trademark carry out a clearance check to ensure that your proposed trademark is not already in use by someone else. Clearance check should at least be done at two levels, one search in the database maintained by the Indian Trade Marks Registry and another general search. You can take help of a Trade Mark Attorney for the same. In case identical or deceptively similar marks are found to be already existing in the market or Trade Mark registry’s database, it is advisable not to adopt and use such trade mark. Going ahead with such mark will result in loss of time and finances in case such mark is refused on the basis of prior existing marks. Also, chances are that you’ll be inviting opposition / passing off / infringement action from the owners of the prior trade mark.
2. Wisely choose your trademark
While choosing a trademark, ideally you should choose a trademark which is fanciful or coined mark (e.g. of such marks is BATA, GOOGLE) or an arbitrary mark (for e.g. Apple). You can also choose a suggestive mark (for e.g. AIRBUS). Such marks rank higher in the hierarchy of marks.
However, it is advisable to avoid adoption of mark:
(a) which is descriptive of your goods or services;
(b) which is a mere adoption of popular trademark with slight modifications/changes;
(c) which consist exclusively of marks or indications which have become customary in the current language;
(d) which is a common surname, name, name of place or Geographical Indication (GI).
3. Don’t wait to register your trademark, early the better
It is advisable to secure statutory protection for your trademark. Registration of a trademark brings along lots of benefits which have been discussed by me in my earlier article available here. An application for registration of a trademark can be filed either on “proposed to be used basis” or in case you have commenced use of the same before applying for registration you can file the application claiming use since the time you started using your trademark.
4. Use your trade mark
You have registered your trademark and not using the same. Not a good idea. Please be cautioned that your trademark can be cancelled on ground of non-use if you do not use it. Not only use is important to protect registration of your trademark but is also important if you want to enforce your rights in a legal recourse.
5. Use the symbols TM & ® but don’t abuse use of ®
Once you adopt a trademark and commence use of the same, you can use the symbol TM with your trademark. And once your trademark gets registered you are entitled to use the symbol ®. In fact, it is advisable to use the same as it acts as notice to others that the trademark belongs to you and you are the registered proprietor of the same.
Although you are free to use the symbols TM & ® with your unregistered and registered trademarks respectively, making false representation of a trademark as registered is an offence punishable with imprisonment which may extend to three years or fine or both.
6. Keep a vigil and enforce your trademark rights
As important it is to ensure that you do not use trademark of other owners, it is equally important that you stop others from using your trademark and infringing your trademark rights. For this it is crucial that you keep a proper vigil and regularly monitor the database of Trade Mark Registry and also keep an eye on the marketplace. You can either do it yourself or hire experts to do the same for you.
Once you identify the wrongdoers or infringing party take immediate action to stop them.
7. Timely renew your trademarks
Remember once you register your trademark, statutory protection is not available to you forever, unless you regularly renew your trademark. Timely renewal of your trademark is the key for avoiding removal of your trademark from the Trade Marks Register and enjoying continued statutory protection.
Remember, it is an investment that you are making, right investment will reap benefits and wrong investment can put financial burden on you. I am sure if you keep the above basics in mind you can definitely reap the benefits of your trademark.
In case you require any professional assistance with regard to your trademark matters, feel free to contact the author.
Author:
Founder Ɩ IP Consultant & Attorney
EDGEwithIPR
Intellectual Property Law Firm
Email – email@edgewithipr.in
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