Trademark Registration and Brand Building

"Trademark" as the word indicates refers to a distinctive sign, trade name, logo, or brand name. The importance of a Trademark comes from the fact that it distinguishes a business from others. Arguably, a Business's Trademark is its most valuable asset. It assigns a distinct and recognisable identity and quality to the products and services provided under it.

Often start-ups hesitate in investing in a Trademark, believing that they haven't created a distinct or recognisable identity yet, and therefore the question asked is, "what is there to safeguard?". This line of thinking can be erroneous. If your vision is to create a brand, wouldn't you want to secure it from the get-go?

A mark does not only distinguish a brand but also helps build it.

Is it not far more prudent to secure your dream before you start investing precious time and resources on it?

Legal Definition

According to Section 2(1) (zb) of the Trade Marks Act, 1999,

“a 'trademark' means a mark which is capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods or their packaging and combinations of colours.”

Trademark Registration

Trademark registration is the process through which a mark is registered, and we will discuss this in some detail at a later point.

Let us first understand the benefits of registration. Registration of a mark grants its owner the right of exclusive use, the right to license & assign the mark, it also creates a record of the mark's existence and use along with the right to avail legal protections under the Trademark Act and other bundle of rights.

While, an unregistered trademark has certain common law benefits and some protection, it does not possess the statutory right of infringement. Registered trademark is represented by the symbol ®. An unregistered trademark is represented by the symbol TM.

Who can file for registration of Trademark?

Trademark application can be filed by the following persons/entities:

1. Individual

2. Partnership firm

3. Company

4. LLP

Depending on which of the above file the TM application and size of the company, the government fees may differ.

Now as stated earlier, I will take you through the Trademark Registration process to give you some familiarity with the process.

Steps involved in successfully registering a Trademark:

1) Public search: It is always advisable to conduct a public search before you go through the registration process to check availability of the mark on the Registry. If you ask me, you should conduct such a search even before you start using your mark. The "Trademark Search" should form an important part of your mark selection and development process.

I have often experienced, that clients come to me after having conducted their own "Trademark Search" and with all the confidence in their mark. While this is a good thing, what many clients do not understand is that distinctiveness of a mark is not only a feature of its spelling but also of phonetics and how the mark looks. Therefore, your search needs to be extensive, which means, you need to try multiple combinations and yet this process offers no certainty. Also, the search must be run in the correct class/classes, depending on the range of products or services offered by your business.

It Is here that practice, and experience can be an asset.

2) Filling of application for registration: Once you are confident in the selected mark, you need to file a trademark registration application using the correct form and in the correct class supported by relevant documents and with complete details of the trademark. Documents may pertain to ownership, proof of use (if the mark is in use), etc.

3) Examination report: Upon filing of the application, the Trademark registry will allot an application number. The application is then examined by the Indian Trademark Office. If there are no objections, then the mark is published and advertised in the Trademark Journal under the relevant class, on the other hand in case objection is raised by the Examiner under Section 9 or 11 of the Trademark Act, 1999, a written response with evidence of acquired distinctiveness needs be submitted within 30 days of receiving the Examination report.

4) Advertisement and opposition: Once the trademark application passes the examination stage, it is advertised in the Trademark journal. The general public and all interested parties are given 4 months from the date of entry of the mark in the Trademark journal to oppose the same.

5) Registration: If there is on opposition to the registration of the said mark, the mark is registered, and certificate of registration is issued.

Once registered, a Trademark needs to be renewed once every 10 years. The validity of the mark commences from on the date of filling the application and not from the date of grant of registered status.

Conclusion:

If you are still not convinced regarding the importance of Trademark registration, and find the process too cumbersome, I hope this helps convince you.

A trademark is the foundation of your business identity, it is what your business will be recognised through, not just today but for years to come. When you see the Apple or Nike symbol, doesn't It provide you with instant assurance of quality? Can you not immediately identify their products?

Is that not the type of brand that you want to create? Invest in it today and invest in it first.

We at Contriance promise to keep bringing you more Information and help you protect your business.

Author - Siddhant Singh