Importance of IP for Start-ups and Entrepreneurs (Part II): Trademarks
Choosing the right name/business representation word, 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 strong emotional attachment to it without proper research. While it is important to be passionate about the business and its representation, every entrepreneur must take the following steps before finalizing on a business representation:
a. Ensure that the name, logo or any other representation shortlisted is capable of achieving strong trade mark 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 mark has not been filed or registered or being used by some one 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.
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. Reputation of famous trade marks can cross national boundaries and shut down a start up after all endeavour.
d. File a trade mark application in the most relevant class/classes. Depending on the financial status of the start up, a trade mark 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 start up 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 trade mark does not arise from filing alone, though filing and registering a trade mark has pertinent advantages in terms of financial value and preventing competitors. Trademark protection automatically starts as soon as the start up starts using it for its business. To give notice of its marks, it is important for every start up to incorporate notices whenever the mark is used in the following format:
Trademark notice format: R in a circle if the trade mark is registered, or TM as superscript, if the trade mark is not registered.
f. Irrespective of whether a trade mark filing is done or not, every start up 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 start up regarding the same.