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02 Mar 2017

Trademark system in India: Best practices

India’s trademark system continues to evolve. The advent of the new IP Policy in 2016, along with constant steps taken by the TM Registry to digitise processes, has yielded visible improvements towards quicker registrations in India. Once the new trademark law comes into force the regime is only going to get stronger and more business friendly.

 As the second largest consumer market in the world, it would be difficult for major brands to ignore India, but given India’s complex legal structure and traditionally not-so-strong enforcement system, brand owners must consciously work towards a smooth entry, existence and growth in the Indian market.

 This write up highlights what brand owners can do to achieve this.

 Selecting a trademark

Choosing the right trademark for one’s business or products/services is as critical as starting a business itself. Ideally, the trademark should be a simple and distinctive word that is easy to remember and pronounce. However, most proprietors do not pay enough attention to this aspect. This leads to objections at the registrations stage as well as disputes later on.

For better protection of Trademarks, the following should be considered:

The trademark should be a unique or distinctive word, logo, device, or other sign that clearly identifies and distinguishes one’s goods/services from those of others;

  • The trademark should be arbitrary or suggestive and fanciful; indeed, from a purely registration point of view, such marks are considered strongest.

Further, trademarks should:

  • not be phonetic or visually identical/similar to any existing mark, regardless of whether that trademark is registered or used;
  • neither be generic nor merely descriptive of the goods/services or their characteristics;
  • not be offensive or in violation of any law;
  • not preferably indicate a geographical region or primarily a surname.

 Availability search

The Indian trademark system is governed under the common-law system. Therefore, registration of a trademark is not mandatory, making it a first to use and not first to file system. One of the common reasons for facing hurdles in registration is the existence of similar marks. Hence, before using a mark in business or filing an application in India, it is important to conduct a trademark search.

The benefit of identifying potential barriers to trademark use/registration justifies the nominal cost of a full availability search. This cost is minimal compared to the potential cost of litigation and damages resulting from unintended infringement. If search findings require further clarification, a trademark in-use investigation can help identify potential risks.

Description of goods/services

The trade description of goods/services is governed by the Nice Classification system consisting of 45 classes. One of the primary reasons for objections during registration or for subsequent disputes arising from the use of a trademark is the incorrect selection of goods/services. Since the classification of goods/services is fairly broad it is advisable to select only the goods/services which you wish to use. Selecting extra goods/services may not only hamper registration chances but may also needlessly invite objections from other proprietors.

It may be argued that there is benefit to keeping the goods/services description vague; however, it is advisable to consult an IP Attorney to prepare a suitable description based on the specifics of the proposed business and mark. Peaceful co-existence of identical/similar marks (with or without registration) for non-similar goods are examples of wise selection of goods/services in spite of both marks falling under the same class of goods/ services.

Filing

A trademark application can be filed by a person claiming to be the proprietor of the trademark in India. Trademarks should be capable of being represented graphically and capable of distinguishing the goods/services of the proprietor from those of others. The application can be filed as “proposed to be used” or if the mark is already in use, by providing the date of first use of the same.

The application requires certain specific information such as Trademark; Name, Address and Nationality of the Proprietor; Description of goods/services; and the first date of use of the mark. If the application is claiming priority of a convention application, details of said convention application must be provided.

A Power of Attorney needs to be filed if the Trademark application is filed through an Attorney. All required information/documentation must be submitted along with the prescribed fees to prevent avoidable objections and hence delays.

Prosecution

Post filing, first the application is checked for formality and compliance and if found in order, it is sent for examination. It is important to keep a regular watch on the progress of one’s application in order to avoid missing deadlines and/or timely provision of information that may delay the registration process. In the event of an objection, a strong and well-reasoned argument is needed to counter, so that the odds of rejection or protracted delays are minimized.

 Use

Trademark rights are based upon use of the mark. If a mark is not used for a certain period (5 years from the date of registration) the registration may be cancelled. Accordingly, continued use of a trademark is critical not only to prevent cancellation of registration but also for enforcement of trademark rights. Below are some of the best practices for proper trademark usage:

  • Always use the generic name of the goods in association with the trademarks;
  • Use the mark as an adjective and not as a noun or verb and when used as an adjective, it should be followed by the generic name;
  • Avoid using the mark in the plural;
  • A trademark should be used in a manner that distinguishes it from surrounding text;
  • Present the trademark in a distinctive and consistent way;
  • Always use the symbol (™) for a trademark or (SM) for a service mark or the registration symbol ® with the registered trademark.

Enforcement

It is the duty of proprietors to monitor their trademarks to ensure that they are being used correctly and not without permission. In the event of any unauthorised use, the proprietor must take appropriate action to stop such misuse. The proprietor must weigh the available legal recourse by consulting an IP Attorney before initiating any legal action. Any delay in initiating legal action could weaken the case.

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