How to do Trademark Search and Registration [Infographic]
In 2009, the Gurgaon based travel portal MakeMyTrip had started an online forum called OkTataByeBye.com. What followed was an arbitration at World Intellectual Property Organisation (WIPO), Geneva, instituted by Tata Sons. Tata Sons contended that the domain name was confusingly similar to ‘TATA’ brand and therefore MakeMyTrip did not have any right to use the domain. In terms of legalese, Tata contended that MakeMyTrip’s use of word ‘Tata’ constituted trademark infringement. Tata won the arbitration, thus taking away MakeMyTrip’s right over the domain.
One may debate the merits of this case for eternity. However, what is more important is for business owners, especially, startup founders is to learn from it.
What is a Trademark?
A trademark is a distinctive sign or indicator of some kind that helps in unique identification of the source or the brand of a product or service. It helps a company in distinguishing its products or services from others. In today’s competitive world, if a business has to thrive, it must distinguish its products and services from the rest of the market. A product or service with no unique identification may not be as successful as it could be with a different brand. As per the letter of the law, it may include shape of goods, their packaging and combination of colours.
But why is a trademark important for a business, especially the startups?
Since a trademark helps in distinguishing your products and services from your competitors, it helps develop and protect your goodwill. More importantly, it protects your brand. Some examples of successful trademarks are ‘Apple’, ‘Xerox’, ‘Microsoft’ etc. However, as a new entrant in the market, a startup founder must do a comprehensive trademark to ensure that he/she is not infringing on another company’s trademark. Trademark registration may be denied in case it resembles the proposed mark to an existing one or prohibited one.
How to find if you are infringing a trademark?
For doing a trademark search in India, one may use the online search database of Comptroller General of Patent Designs and Trademarks. The online database can be accessed here. The database is easy to use and can be used by layman too. You will need to know the class of your product.
You would have to enter a ‘keyword’ and the class of your product. The ‘keyword’ should be the first few alphabets of your trademark. The law has classified products and services in different classes. You can find your product’s class here. For instance- For a trademark in Clothing, footwear or headgear business, the class number is 25.
The Comptroller General’s Office supervises trademark registration and other related regulatory matters in India. Its main task is to register trademarks which qualify for registration as per provisions of the Trade Marks Act and Rules, and to maintain the Register of trademarks. It also acts as a resource and information Centre and is a facilitator in trademarks related matters in the country.
Apart from using the online database, you may also request the Registrar for an opinion on the distinctive character of the mark. However, such opinion or report is not binding.
The two essential qualifications for trademark registration are:
- It must be capable of being represented graphically,
- The mark must be capable of distinguishing the goods and services of one person from those of another.
Therefore, a trademark which is either identical with or similar to an earlier trademark cannot be registered. For instance, an application for trademark ‘Venus’ for chocks for fluorescent tubes was refused on ground that ‘Venus’ mark was already in use in respect of water heaters and coolers and was in existence from 1961.
Any wrongful or unlawful use of a trademark by someone other than the registered use qualified as trademark infringement. Even a deceptively similar mark, if not identical, may lead to trademark infringement. This is so because a registered trademark gives the registered user to exclusive rights to enjoy and exploit the mark. A recent example of this is the dating app Tinder alleging trademark infringement against 3nder, an independent app for non-monogamous couples.
Even though it is not mandatory to register your trademark, it is advisable that you should get your trademark registered. Registering your trademark will give you exclusive rights and protection against future infringement. Find a trademark lawyer on Lawyered.
How do I register my Trademark?
You can file your application for registration may be filed in the Trademark Office under whose jurisdiction your principal place of the business falls. In case, your place of business is outside India, then your should file your application in the Trademark office under whose jurisdiction the office of your lawyer is located. Find a Lawyer on Lawyered to ask a question related to filing of trademarks. As discussed above, it is extremely important to conduct a trademark search to avoid a conflict with already registered or prohibited marks.
You must ensure that your mark does not hit any of the below mentioned conditions-
- Cause confusion,
- Devoid of distinction
- Consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade. Have a question about this? Ask a trademark lawyer here.
- Hurts religious sentiments,
- Uses national emblems or any other marks which are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Following factors will determine the fate of your trademark application-
- Whether your mark would take unfair advantage of an earlier trade mark?
- Whether your mark would be detrimental to the distinctive character or repute of earlier mark?
Usually, a trademark registration process takes place in the form of following stages-
- Examination by registrar
- Communication of objections, if any. The objections may be regarding distinctive character of your mark or similarity with an already registered Trademark.
- Hearing stage.
Once your application is accepted, your trademark will be published in the Trademark Journal. Since it is an important process, it is necessary that the public is given a notice of your application. This ensures that the trading public whose rights might be adversely affected by your mark’s registration gets adequate opportunity to voice their concerns. In case the application is not opposed or the relevant time period expires or the opposition is decided in your favour, your trademark will be registered.
Find about other types of intellectual property here.