Trademark For Business Growth

Defining Trademark

A “trademark” is a mark which is used for a commercial purpose. It is also called a brand name because it contains names, symbols, logos, and taglines that help to identify and differentiate a company’s goods and services from those of others. For example, Coca-Cola, Nike, Boost.

How do trademarks function?

Trademarks perform the following functions-

Trademark or logo helps identify the goods and services easily:

A trademark serves as a means of identification for a certain brand, corporation, or other entity, allowing it to be clearly distinguished from the other brands on the market. Customers can simply differentiate between the brands they were looking for. This type of attachment with a brand is solely based on satisfaction of the consumers.

Adidas, for example, is a brand that has achieved success in the sports business by introducing sports clothing and other related products. Customers can identify the brand and its products by a glance. It is not necessary to mention the word Adidas on every product. It is much preferable to use their brand or logo.

Trademarks reduces the chance of confusion:

Trademarks helps in preventing confusion  in the minds of consumers by indicating the source and quality of the product, they are intending to use. Sections 9 and 11 of the Trademarks Act, 1999 address the notion of confusion.

Trademarks help in the advertisement of the goods in a global level:

Trademarks helps a brand in gaining popularity  by allowing a company to advertise or market their products on various domains around the world. Once a brand becomes popular, it is no longer necessary to use the actual brand name in posters and other forms of marketing; this may be accomplished by simply writing the product’s information with the trademark sign and flashing it on social media and other sites to increase its popularity. Amazon, for example, has registered its trademark as a shopping cart with a blue backdrop, allowing everyone to recognize it as Amazon. Because of its digital marketing being so powerful and influential, many small businesses come forward to collaborate with large companies like this.

Trademarks grant exclusive rights to the owner of the product or service:

Having their trademarks registered, owners have the right of exclusivity over their products. This will prevent any third party from using their mark.  Moreover, the owner can license the mark to another party for a fee.

What constitutes a Trademark?

To qualify as a trademark, a phrase or symbol must contain the following elements:

Trademark must not be a  generic term:

A trademark’s strength is determined by its level of uniqueness. To obtain trademark protection, a business must first adopt a graphically represented mark which is unique and distinguishable. Section 9(1) (c) of the Trademark Act, 1999  prohibits the registration of words used commonly. Generic words can be protected under the Trademark Law when it has acquired distinctiveness through long term use, or it does not refer to the related products.

Trademark should not directly describe the related products and services: 

Section 9(1) (b) of the Trademark Act, 1999 , expressly prohibits use of marks that are indicative of the products they are into. The trademark must not be descriptive of the relevant products and services. The trademark must be distinctive, arbitrary, fanciful, or suggestive instead.

Trademark must not create a “likelihood of confusion” among the public:

The trademark should not be deceptively similar earlier marks. Section 9(2)(a), the Trademarks Act, 1999  prohibits a trademark from deceiving the public  with respect to the nature, function, quality, or purpose of a product or service. On the other hand, Section 11, the Trade Mark Act, 1999, reduces misunderstanding  among the public between two trademarks and benefits the trademark owner by preventing others from profiting from the owner’s goodwill.

What is not considered as a Trademark?

The trademarks consisting of common terms which are used in daily basis or which describe the products and services they are into, cannot be granted protection under the trademark law. They can only get the protection under the trademark law and get trademark registration when they build a reputation of the specific products and services they deal with. It takes years for them to get registration. This phenomenon is called acquired distinctiveness.

Thus, it is advisable to use a trademark that is unique and fanciful as it helps to get it protected under trademark rules. For Example, Nike, Apple, Haagen-Dazszl.

TRADEMARK AND BUSINESS

Trademark registration plays an important role in the business sector as it legally protects the trademark of one company from being misused by others. It allows the customers to identify the products by just seeing the logo. The companies can prohibit others from using the same trademark. As a result, there will be a less chance of confusion in the minds of the customers. Thus, it is essential for companies to register their trademarks.

How advantageous is trademark registration in business sectors?

Trademark registration proves to be beneficial for the business sector in the following ways-

Grant Exclusive rights

Registration gives the registered owner exclusive rights to prevent third parties from selling identical or similar items or services using an identical or confusingly similar trademark.

Legal Protection

Under Section 29 of the Act, trademark registration provides significant legal protection against infringement. A registered trademark gives the proprietor a clear advantage in pursuing their rights in the event of unauthorized use or efforts to pass off a similar mark. This legal provision allows the trademark owner to launch legal procedures against infringing parties and seek appropriate remedies, including as injunctions and damages, to protect the trademark’s integrity and uniqueness.

Ownership

Registered trademarks are easier to enforce since they typically carry a presumption of ownership. Furthermore, several nations have put in place mechanisms that allow customs officials to investigate and confiscate counterfeit items that violate a registered trademark.

Asset of a business

A registered trademark lasts for a long time, provided it is used and renewed time to time.

Enables Selling or licensing of trademark

The rights owner may be able to earn money by selling or licensing  their registered trademark.

Establishes Brand Recognition

Trademark registration contributes to the development of a brand’s reputation and trustworthiness. The brand’s goodwill grows as it gets popular among customers. This results in the establishment of a loyal consumer base, that can identify and choose the same brand’s products or services.

Grants International Protection

Sections 154 and 155 of the Paris Convention for the Protection of Industrial Property, where India is a member allows the Indian applicants to obtain priority and benefits while getting their trademarks registered in other member nations. This worldwide recognition enables Indian firms to defend their trademarks overseas, allowing for global expansion and securing intellectual property rights in other markets.

Distinguishes Products and Services

A trademark tries to differentiate goods and services from rivals while also establishing a brand identity. Trademark registration facilitates the commercialization or marketing of a product or service with a distinct brand identity that meets market standards. The brand identity conveys the company’s quality, vision, and other product attributes to buyers while also establishing its individuality.

STEPS FOR TRADEMARK REGISTRATION-

Trademark Registration entails numerous stages that will provide legal protection for your business identification.

Trademark Search

The very first step towards trademark registration is to conduct a thorough trademark search to check that the trademark is distinctive and not currently being used by someone else.

Identifying the Suitable Class of Goods or Services

The second step towards trademark registration  includes determining the appropriate class or classes of products or services for the trademark. The Nice Classification system categorizes trademarks into several classes, which must be specified.

Creating a Trademark

The third step towards trademark registration is to create the trademark, which may be a word mark, a logo, or a combination of both. It is necessary to ensure that the trademark is distinctive and not descriptive of the products or services.

Hiring Trademark Attorney

The fourth step towards trademark registration is to consult with a trademark attorney in India or agent who has expertise in the field of Indian trademark law. They can assist in navigating the procedure, conducting a professional search, and complete the application.

Examination and Review

The fifth step towards trademark registration is to get the trademark application reviewed by the trademark office to ensure that it meets all legal criteria and does not conflict with any existing trademarks. This procedure may take several months.

Publication and Opposition Period

The sixth step towards trademark registration includes publication of trademark application in the Trademarks Journal for four months, after it has been successfully examined. During this phase, third parties may oppose your trademark if they feel it infringes upon their rights.

Registration Certificate

The seventh step towards trademark registration includes the issuance of registration certificate if there are no oppositions and the trademark application fulfils all conditions. This certificate shows that you have exclusive rights to use the for the specified products or services.

To keep the trademark valid, it must be actively utilized in commerce once it has been registered. Also, renewal costs  to be paid on a regular basis to renew the trademark registration, in every ten years.

How can companies enforce their rights after getting their trademarks registered?

Enforcement of rights is a crucial step for the companies towards protecting their trademark. By enforcing rights in their trademarks companies can prevent the third parties against infringing their trademark and will have exclusive rights over the trademark. The enforcement of rights can be done in the following ways-

Consulting an attorney and conducting watch service to monitor trademark applications by third parties

By conducting a watch service, companies will be notified about the similar trademarks that can be a potential threat to their trademark. Accordingly, companies will be able to oppose the registration or petition to revoke the trademark if it is already registered.

Filing opposition against pending trademark application or registration by third parties

Filing of opposition on grounds such as similarity to an existing registered trademark, lack of distinctiveness, descriptiveness , application in bad faith etc., must be done within four months from the date it was published in the trademarks journal by way of filing TM-O with necessary fee. The burden of proof lies on the opponent with respect to the grounds of opposition.

Sending cease-and-desist letters after conducting investigations, to prevent usage of the mark by third parties

Cease-and-desist letters must be sent by one party to another party to prevent them from using the trademark without the consent of the owner. Before sending, the trademark owner should consult with a trademark attorney to evaluate if the alleged infringing trademark is likely to cause confusion.

Litigation proceedings against infringement or dilution

Section 134 of the Trademark Act of 1999 allows for the filing of a trademark infringement complaint in District Court. The court will then pass an injunction order. This ruling may require the payment of damages as well as the destruction of infringing labels.

ROLE OF DIGITAL WORLD IN PROTECTING TRADEMARK REGISTRATION

With the growing concept of brand value, trademark attorneys must be concerned with all aspects of a brand’s protection, not simply its trademarks. With the onset of internet, protecting a brand covers a lot of challenges such as: Trademarks in domain names; trademark usage online; trademarks in social media handles; and trademark mentions in general online comments.

Earlier, internet domains were only known for academia and research. Access to information through websites has changed the way trademark professionals think about brand management and protection online. Presently, it is important for brands to register themselves in all relevant domain names and keep an eye out for competitors or members of the public utilizing their trademarks on non-affiliated websites. Social media not only ensures that trademarks are protected across social channels, but also helps  business  sectors to take a right approach towards engagement on such channels. This is a very vibrant sector for businesses. New platforms provide new opportunity to interact with various audiences.

How is the digital world contributing towards a successful trademark registration?

The digital world is contributing trademark registration in several ways, including:

Digital signatures

Digital signatures are digitally encrypted signatures that may be used to file trademark applications electronically. Digital signatures eliminate the need for physical documentation, reducing the time and effort necessary to process trademark applications.

Blockchain

The decentralized structure of blockchain allows for a transparent verification method, which can speed up trademark registration.

Online services

Applicants can use online services to receive timely consultations.

Madrid System

The Madrid System is a low-cost approach towards trademark registration and maintain trademarks throughout the world. The Madrid System allows you to apply for protection in up to 130 countries by filing a single worldwide trademark application and paying a single set of costs.

CONCLUSION

Trademark registration plays a crucial role in protecting the brand for startups and small businesses. The strongest trademarks are those that are arbitrary, fanciful, and not like existing trademarks and this increases their chance of being registered. This will not only enhance the value of the company, but also attract investors.  Furthermore, trademark registration creates prospects for growth, asset valuation, and worldwide expansion.