This post was first published on March 14th, 2013.
Name, logo, device or any other form of business representation is generally the first asset created by an entrepreneur. Often entrepreneurs finalize on a name or logo and develop a strong emotional attachment to it. While it is important to be passionate about your business and its representation, every entrepreneur must take the following steps before finalizing on a business representation:
a. Ensure that the name or any other representation shortlisted is capable of achieving strong trademark protection. It is well settled under the trademark law that a fanciful (newly coined word) or arbitrary (having no connection to business) marks have the strongest protectability. Examples of such words or marks are Kodak and Apple. While it is tempting to choose a word that is suggestive or descriptive, such a mark, to start with does not give very strong protection and must be avoided.
b. Once a word or representation is chosen, it is important to ensure that such a mark has not been filed or registered or being used by someone else. The task can be accomplished by performing a search on public trademark databases. The Indian trademark database can be found at www.ipindia.nic.in
The process for performing a trademark search is provided hereunder
Step 1: Finalization of classes for Search:
Under the trademark law, goods and services are divided under different classes. Before registering a trademark the correct class of goods/services has to be identified from the list of classes provided at the following link- http://ipindiaservices.gov.in/tmrpublicsearch/classfication_goods_service.htm
E.g. software products get covered under class 9 while software services get covered under class 42. Machine tools get covered under class 7.
Step 2: Conducting Trademark Search:
(i) The Indian trademark search is to be conducted on the Indian trademark office database at the following link-
(ii) Enter search type as wordmark, and then enter the mark/keywords from the mark in the search box for the specific class(es) identified in step 1 above.
(iii) Choose the option ‘contains’ and click search.
(iv) Shortlist the marks that look/sound similar to the mark that is to be registered.
(v) Similarly, enter search type as phonetic, and enter the name of the mark in the search box and click search.
(vi) Once again shortlist the marks that look/sound similar to the mark that is to be registered.
The shortlisted marks are the ones that may pose potential conflict risk in the future.
In addition to performing a trademark search, it is also a good idea to perform a general search in business directories to be doubly sure that no one is using the proposed mark.
c. Ensure that you do not use a famous trademark of another company, whether the company has operations in India or not. The reputation of famous trademarks can cross national boundaries and shut down a startup after all endeavors.
d. File a trademark application in the most relevant class/classes. Depending on the financial status of the startup, a trademark application must be filed at the earliest in the most important class. While approaching an attorney is advisable, this task can be performed by the startup independently, when low on funds, by visiting www.ipindia.nic.in. The online application process is self-explanatory and simple if you have a digital signature.
e. Protection of trademark does not arise from filing alone, though filing and registering a trademark has pertinent advantages in terms of financial value and preventing competitors. Trademark protection automatically starts as soon as the startup starts using it for its business. To give notice of its marks, it is important for every startup to incorporate notices whenever the mark is used in the following format:
For the registered trademarks: ®
For unregistered and Pending Trademarks: TM
f. Irrespective of whether a trademark filing is done or not, every startup must take appropriate steps to clear trademark risks. Risk clearance can be done by performing a search to identify similar marks and analyzing risk levels. Every competent trademark attorney will be able to help a startup regarding the same.