In our previous post, we discussed frequently asked questions on trademark registration in India. In the current post, we will explain some of the important points that the trademark owner should do and not before and after registering the trademark in India.
Very few trademark owners pay attention to the viability of successfully registering the business name or product name by the way of trademark. Applying for trademark registration and getting the trademark registered requires a lot of effort. The chances of successful trademark registration without any objection by trademark registry and/or third party depends on how unique the trademark is. The trademark owner must ensure that the trademark is unique and at the same time ensure it distinguishes the product or service offered by the company from those of competitors. A trademark owner can enhance his chances of successfully registering the trademark by following certain important factors explained below. The trademark owner should also follow certain aspects even after registration to have the trademark protection.
1. Understand what is trademark
A trademark protects the name of a business or company, a product and a service as well as slogans and the like. A trademark distinguishes the product or service offered by the company from those its competitors may provide. Customers recognize the brand and their products associated with the trademark in a crowded market. Trademark prevents competitors from copying, or infringing on, someone else’s work. Over a period of time, the trademark of the company becomes synonymous with company’s offerings, quality and trust in the minds of customers and the general public alike.
2. Selection of a trademark
Select a word or logo that is unique and distinctive. Create a new word or phrase that has no meaning in English or any other language. Trademark of a company is the first impression created in the minds of customers. As such, select a trademark that is attracting, catchy and appealing. If a tagline helps you distinguish the trademark, then use it appropriately so that your customers and/or public recognizes the trademark with your business.
3. Identify relevant trademark class
In India and most other jurisdictions, the products for which trademarks are registered are categorized using 45 product classes of the International Classification of Goods and Services under the Nice Agreement. Classes 1 to 34 are used for goods and classes 35 to 45 are used for services. The trademark owner can file the trademark application in one or more relevant classes to protect the trademark in those categories.
4. Apply for trademark registration as soon as possible
Every day, trademark owners file hundreds or thousands or trademark applications for registering their trademarks. Even though the trademark owner has come up with a unique name but fails to apply for trademark registration in time, then another trademark owner who filed the application prior will get protection. If the trademark owner used the trademark from an earlier date, then the trademark owner should file the trademark application along with an affidavit claiming prior usage of the trademark.
5. Respond to communication from Trademark office in a timely manner
After filing the application, monitor the status of your application from time to time. If you receive any objection or communication to rectify an error made in the trademark application, do respond to communication within the specified timeline. Failure to respond to communication within a specified timeline leads to abandonment of the application. Therefore, make sure the communication and any objection therein are properly addressed.
6. Use appropriate trademark symbols
It is not mandatory to use trademark symbols ™ or ® next to your logo, however doing so signifies that someone claims ownership of the mark, which could make other businesses think twice about “copying” part of your brand. ™ indicates that the trademark application has been filed and the registration is under process. A trademark owner can use the ™ beside his brand name or logo once the application is filed. He can use it until the registration is done. After registration, the ™ gets replaced by ® which means the trademark registration is completed and it is valid for 10 years.
7. Continue to use the trademark
The trademark owner should use the trademark. If the trademark owner stops using the trademark for a period of five (5) years, then any aggrieved person can file a petition to the trademark office for rectification or removal of the trademark.
8. Renew trademark
Trademarks are valid for 10 years and can be renewed every 10 years. In other words, if the trademark owner renews the trademark every ten (10) years, then the trademark protection lasts forever.
9. Monitor the trademark
After the trademark is registered, the trademark owner needs to check if some third-party is copying or abusing the trademark. This helps the trademark owner of the trademark to stop the third-party from using or copying the trademark. Further, if someone else files for a similar trademark, then the trademark owner can oppose the registration of the trademark application.
1. Don’t use a trademark if:
- It is descriptive;
- It is generic;
- It is deceptive;
- It contains scandalous or obscene matter;
- It relates to a shape of good(s) which results from the nature of the goods;
- It is identical with an earlier trademark i.e., either registered or pending for registration; and
- It is a well-known trademark.
2. Don’t use common words, laudatory words, verbs and plurals
The trademark owner should ensure that the trademark is not a commonly used word. Don’t use laudatory words such as best, super, excellent, etc. While applying for a trademark, don’t pluralize a trademark e.g., “Three Snapples”.
3. Don’t use name of a geographical location
Avoid including the name of a place in the trademark. The trademark office may object to the trademark considering that the trademark owner is seeking protection for exclusive right to use the geographical name.
4. Don’t respond to communication from trademark office without proper consultation
Trademark owners can file the trademark application and respond to communication from the trademark office. However, they often make a lot of mistakes. Clerical errors in the trademark application and improper response to communication delays the registration of the trademark application. Therefore, it is advisable to take help from a trademark agent to file the trademark application and respond to communication from trademark office.
5. Don’t change your trademark
Don’t change your trademark without seeking advice on the implications of the desired change on your rights.
Author: Chandrasekhar Raju, Patent and Trademark Attorney
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