For every startup, their brand’s name is a gateway towards their market recognition. A strong brand name, hereinafter referred to as a “Trademark”, is a company’s most valuable asset, as it differentiates the creator’s products from its competitors in the market space. A trademark carries immense value, as it retains customer loyalty by being a source identifier that is often associated exclusively with a particular business and its heard earned goodwill and reputation
This makes choosing a strong Trademark extremely crucial. This guide explains the practical steps startups should take while adopting a Trademark and methods to protect the said brand name across India.
Step 1 – Adopt a coined, fanciful or arbitrary trademark:
A business should choose a distinctive, yet registrable name. The more unique a trademark is, the easier it will be to use it as a definite source identifier. Registering a coined, fanciful or arbitrary trademark is easier as these are inherently stronger trademarks, subject to being unique and different from the prior existing trademarks registered and used in relation to similar goods and/or services provides stronger legal protection to a Trademark.
On the other hand, choosing trademarks that are generic terms or are descriptive of the goods and/or services one wishes to use them for, or are laudatory in nature in relation to the goods and/or services are not only difficult to register under the Indian Trademarks Regime, but are also weak source identifiers. For instance, adopting the trademark “Best Rice” for manufacturing and selling of Rice is difficult to register as trademark and is also not helping the business in setting up a unique identity for itself.
Step 2 – Conduct a trademark availability search:
Before the company invests in branding of their goods and/or services or launched its brand into the market space, a professional trademark availability search should be conducted with the help of IP lawyers, to check if the mark is registrable in India. The search would identify prior marks subsisting on the Trade Marks Register, that may pose a hinderance to the registration and/or use of the Proposed Trademark. The hinderance is calculated from the perspective of the Trade Marks Registry citing prior marks in the Examination Report, as well as located prior marks that could be the basis of an opposition action or a legal action under laws of infringement and passing off.
Step 3 – Register the trademark in the right classes:
The Nice Classification system is an international standard established by the Nice Agreement, 1957, that is used to categorize every good and/or service for the purpose of trademark registration. India is a signatory to the Nice Agreement and follows the Nice Classification system that divides all products and services into 45 distinct classes. It is important to identify the classes pertinent to one’s business and file trademark applications in the said classes. Identification of the right classes permits business owners to claim proprietorship across all business interests. Business owners could consider filing in multiple classes where expansion is likely – for instance food brand usually register under both packaged foods as well as catering services. That said, it must be kept in mind that wrongly classified registrations and/or defensive registrations are often picked up by the Registry and refused registration. Registering a trademark in the right NICE Classification allows its proprietor to enforce its proprietory rights in the trademark by way of a valid infringement action across courts in India.
Step 4 – Consider registering the word mark and well as accompanying logos, acronyms, and taglines:
A brand is a combination several factors including the brand’s name as well as its visual identity including logos, acronym, taglines, slogans, packaging, colour combinations. Appropriate trademark applications must be filed for all of these aspects, to holistically protect a brand’s identity.
Step 5 – Consistently use the trademark as filed:
Consistent, continuous and uninterrupted use of a trademark creates sufficient evidence of use of the trademark. This immensely supports successful enforcement and valuation of a trademark. For instance, business owners must maintain an organised record of invoices, advertisement material, packaging, website screenshots, promotional campaigns and sales figures in relation to the brand. Securing domain name registrations and actively maintaining social media handles also strengthens the brand’s presence and identity in the market place.
Step 6 – Monitor the market place and Enforce the Trademark Registrations:
Businesses must monitor the market space to catch identical or deceptively similar trademarks and enforce their prior rights proactively. Regular searches in the online records of the Trade Marks Registry to look out for subsequently filed identical or deceptively similar trademarks and monitoring sale of counterfeit products via unauthorized sellers is extremely crucial.
Trademark proprietors may enforce their rights in their trademark either by way of filing opposition action against subsequent pending trademark applications, or taking legal action against use of identical or deceptively similar trademarks by way of sending Cease-and-desist letters, which is usually the first step followed by Civil actions for injunctions, damages and delivery up of infringing goods.
Monitoring for infringing use and taking timely enforcement action not only mitigates financial damage and damage to the reputation and goodwill of a brand, it also deters copycats from capitalizing on the value of an established or registered trademark.
Using contracts and non-disclosure agreements before sharing sensitive branding strategy also protects brand assets within the business. It is highly recommended that service agreements include brand usage guidelines and clarify IP ownership of IP created within the business. Licensing agreements with quality control clauses also protect goodwill of a brand licensed to third parties.
Step 7 – Seek international protection and registration of trademarks:
A business must plan to expand its presence outside India and consider international trademark protection early. India is a member of the Madrid Protocol, which allows filing an international application based on an Indian application or registration. To do so, businesses must prioritise key markets and file applications across markets of interest in the most cost-efficient and nuanced manner.
For startups, the brand name is an investment that pays returns as customer recognition, pricing power and investor interest grow. Protecting that name early using trademark registration, consistent use, contractual safeguards and proactive enforcement turns a name into a defensible business asset.
How MAHESHWARI & CO. can help
MAHESHWARI AND CO. is a full-service Law Firm that represents its clients in a number of complex and high-value transactions. Our seasoned attorneys specialize in all aspects of Intellectual Property Rights. The Firm is well positioned to help companies and individuals leverage their Intellectual Property Rights in India and internationally, aiming to accelerate and strengthen the commercialization of the intellectual properties.
As a trusted legal partner offering end-to-end IP services, including trademarks, patents, copyright and design advisory, filing, prosecution, enforcement, litigation, as well as holistic portfolio management, the firm can guide clients through complex procedural and substantive IP requirements.
As your long-term partner for your IPR management needs, MAHESHWARI AND CO. would ensure global business expansion and comprehensively protect client’s Intellectual Property Rights with alacrity and prompt efficiency.
Author: Akshi Seem, Associate Partner
Co- Author: Aditya Narayan, Intern
