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Why you need a trademark
A trademark is the mark, logo or trade name which identifies your business to your customers. A trademark registration is valid all over India. Even though the registration of a trademark is not compulsory, it has significant advantages:
- Registration of the mark creates a presumption of your ownership of the mark. In case someone else violates your trademark, it is much easier to proceed against them if you own a registered trademark. As an entrepreneur, the return on investment (ROI) on the time and money spent registering your trademark is huge as it does away with the hassle of establishing your trademark in a court if a dispute arises. If you are an online business, your trademark would usually include your domain name. In fact, getting a trade mark for your domain name is the only effective way of protecting against people who use names sounding similar to yours to get some of your traffic – the Internet Corporation for Assigned Names and Numbers (ICANN) dispute resolution process is pretty much out of the reach of the average Indian entrepreneur.
- Registration in India will be needed before registering your trademark in other countries.
- You can only use the ® symbol if you have a registered trademark. (Note if your trademark is not yet registered, you can put ™ symbol next to it).
- Your trademark and your goodwill is an important part of the value of your business. Any serious investor would do an intellectual property (IP) audit to check whether your IP is sufficiently protected.
How Does the Process Work?
The trademark registration process requires every applicant to specify the categories under which he would like to register his trademark. There are 45 categories/classes in all: Classes 1-34 deal with goods, while Classes 35-45 deal with services.
Let us say you manufacture shirts under the brand Akosha. If you look at the classes of goods and services, your product would be registered under Class 25 – “Clothing, footwear, headgear”. This means that you would only be protected against another person/company making any clothing, footwear or headgear under the same brand Akosha or a name which is deceptively similar to that. It does not mean that someone else cannot use the brand name Akosha for products in other categories (e.g. Akosha cigarettes, for example). There are exceptions to this rule, but the simple point is that it is important to choose which categories you would fall under carefully, and check if your business can fall under multiple categories (even in the future). The more categories you fall under, the better protected you would be. However, before you begin thinking of starting a business called ‘Samsung Shirts’, please look at “well known” trademarks section below.
Also, word and logo trademarks have to filed separately. Therefore, you would have to file a trademark for the word “Akosha” under Class 25, and separately for any graphic representation (your logo) of Akosha under Class 25.
Before filing the trademark, it is important to understand that if you file the trademark in your company’s name, the trademark will be owned by the company i.e. its shareholders (who might change from time to time). Therefore, some single founders prefer to get the trademark registered in their own name (and let their company use it under a trademark license agreement).
Once you have understood the basic idea of registering your trademark, it is time to talk to a trademark lawyer. As an entrepreneur, it is generally not be worth your time to go and try to file the trademark yourself.
Costs and Choosing a Lawyer
Trademark application fees are Rs.2500 per mark per class. These are paid to the government. Lawyers usually charge anywhere between Rs.1000 to Rs.3000 per mark per class in addition to that. So if you file for a word mark and a graphic mark in two classes, it’ll cost around Rs.10,000 just in government fees, and another Rs.5000 to Rs.15000 on the lawyer’s fees. In addition to this, you will also have to pay for getting a trademark search done to check if there are other similar trademarks. Trademark searches usually cost Rs.500.
It is wise to choose someone experienced and who has been recommended to you: well-identified classes, and a well-drafted application could become crucial in case any dispute arises later. The lawyer also helps you answer any queries that the Trademark Office may come back with and will usually charge separately for it. Do not hire your regular lawyer – your school classmate or uncle – make sure you go to a lawyer who has actually filed trademarks before.
Steps for Registering your Trademark
- Authorize a lawyer to act as your agent.
- The lawyer will conduct a search with the Trademark Office to check if there are any similar trademarks already registered under that particular class. There are two kinds of search: online and offline. It is recommended that you get both the searches done. Make sure the lawyer understands your business and is using the right keywords for this search.
- Depending upon the results of the search, the lawyer will draft your trademark application. In case someone already has the same or similar trademark, you may have to change yours. Or if you think that the trademark is rightfully yours, your lawyer will help you oppose that trademark. These days since most businesses also reserve domain names while registering their companies and brands, so it is generally easy to find out beforehand whether someone else is using an intended trademark.
- The lawyer will file your trademark application with the Trademark Office and send you the receipt.
- After a few days, the lawyer will send you the Original Representation Sheet of your trademark as it has been filed with the Trademark Office.
- After this process starts the long wait. It can take anywhere between 18 months to 2 years for the Trademark Office to decide whether or not to grant you the trademark; if there are objections from the trademark office or from anyone else, it may take longer. At the end of this process, your trademark is published in the Trademark Journal.
Trademark – Some issues which may Crop up
So what are the kinds of things that the Trademark Office or other parties could have a problem with?
Descriptive trademark: If you have a descriptive name, it will be difficult to get a trademark for it. For example, if a website called Apple sells apples, it would not be able to get a trademark for the name apple. A skilled lawyer may be able to draft your application in a way which makes this possible for you (essentially by claiming that you are not selling apples. Don’t ask!).
Non-distinctive trademark: Your trademark needs to be distinctive for it to be registered. So it should not be similar to any other existing trademark i.e. a reasonable person should not be confuse your trademark with someone else’s. Also, you may have to work a bit on the graphic representation of your trademark to make it more distinctive. It is helpful to add a design to the word logo. For example, see the curved man on the www.naukri.com logo.
Similar to a well-known trademark: While you have to specify classes under which to register your trademark, this does not mean that you can use a well-known trademark for a category other than what it is famous for. For example, Coke is a big brand for beverages, but since it is well known, you cannot use it for your own category, say software.
There are several other grounds on which your trademark may be rejected but these don’t come into play very often (e.g. obscenity, hurting religious sentiment, misuse of emblems etc.).
Trademark Offices in India
The following table sets out the different trademark offices in India. You should find a lawyer in the city which is nearest to you for registering your trademark.
|Trade Marks Registry Mumbai
Intellectual Property Office Antop Hill Post Office,
S.M.Road, Antop Hill,
|Trade Marks Registry,
Delhi Intellectual Property Office Plot NO.32,
Dwarka, New Delhi-110075
|Trade Marks Registry,
Kolkata Intellectual Property Office CP-2, Sector V, Salt Lake city, Kolkata-700091
|Trade Marks Registry, Chennai
Intellectual Property Office
G.S.T. Road, Guindy, Chennai-600 032
|Trade Marks Registry,
Ahmedabad National Chambers, 15/27,
1st floor, Ashram road,Ahmedabad-380 009
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[Related Article: Should startups worry about trademarks issues?]