Trademark registration in India

What can I trademark?

The Indian Trademark Act defines a trademark to include a mark which is capable of distinguishing the goods and services of one person from those of the other. A mark includes device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours, etc.

Another important requirement is that the mark should be capable of being represented graphically. E.g. Intel, McDonald’s, Coca Cola, Boeing, Flipkart, 555, Johnnie Walker, Wipro, etc. are all trademarks which can be represented as a name, signature, word number, etc.

Since, the trademarks should be capable of being represented graphically; technically a trademark can also be registered for a sound and smell. The first sound mark that was registered in India is the Yahoo yodel. Similar sound marks for the MGM lion roar or the sound made by Harley Davidson are potential candidates, which may seek protection as sound marks in India.

Recommended watch for beginners: Watch this amazing crash course video on what are trademarks and how trademarks help in avoiding consumer confusion. This short video will give you a quick understanding of trademark principles.

The video has a US trademark perspective but the trademark principles are almost the same worldwide including India.

How to check if I don’t use someone else’s trademark for my business?

Before you start your business and think of a name or a character or mascot, it is equally important to ensure that you don’t use someone else’s trademark. The simplest way is to conduct some trademark research before deciding on the name.

To check for the possibility of trademark registration, you can use online search engines like Google to figure out if the name you intend to use is being used by someone else. If you have coined the trademark yourself to create a word which doesn’t exist, there are chances you may not find anything similar. Still perform a search to see if you find anything else which sounds similar.

Even if you haven’t found anything on the search engines, it is important to do a search on the Indian Trademark Office’s trademark database. This database includes trademark which have been filed and registered with the Indian Trademark Office. Since, a trademark can be filed on a ‘Proposed to be used’ basis, it is possible that nothing pulls up on search engines but the same is filed for trademark protection.

In case, you find similar trademarks to what you intend to use, a detailed assessment needs to be made regarding the chances of getting a trademark registered and future conflict.

Since, the trademark system is divided in 45 classes; it is possible that similar names may be registered in different classes by different applicants without causing any confusion in the market. Hence, if you are confused if the trademark office will grant a trademark to you, it is strongly advisable to consult a trademark lawyer / agent, who has considerable number of years of experience in dealing with trademark related matters. This initial advice will help you avoid costly litigation and frustration of losing your business name years down the lane. Remember, prevention is always better than cure and in the legal world, also less expensive in the long term.

I have started my business, should I trademark my name?

It is generally suggested to pick a name which is easy to remember and doesn’t lead to any confusion. Once you have done that, the next step is to file for protection, so that you can stop others who try to use a similar mark and gain advantage from using a similar looking or sounding trademark.

Although it is not mandatory to file the trademark immediately, it should be done as soon as you believe that the trademark has gained some level of recognition in the market and your business will be impacted if someone else tried taking undue advantage of it.

Is it mandatory to register a trademark?

Registering a trademark is not mandatory under the trademark law. Use of the trademark in business is considered important. However, not registering a trademark makes it more difficult to prove the ownership of a trademark. Further, upon violation of trademark rights, the owners of unregistered trademarks can only sue for passing off, whereas the owners of registered trademark can also sue for trademark infringement.

Hence, it is always recommended to file for trademark registration at the earliest possible instance. Businesses which are bootstrapping and wish to prioritize, prefer to file for registration of their trademarks only once they have reached a level in their business, i.e., where they believe that the trademark has become an important identity of their business. But such an approach involves the risk of a third party trying to take advantage and appropriate the trademarks on their own.

Hence, filing a trademark, though not mandatory, is highly recommended at the earliest possible time.

Where do I have to file a trademark?

In order to seek protection for a trademark, an application for trademark registration has to be filed with the Indian Trademark Registry. The Trademark Registry was established in 1940 and administers the trademark registration process in India. There are five trademark registries in India, which are located at Delhi, Mumbai, Chennai, Kolkata and Ahmadabad.

Who can file a trademark?

An application for trademark registration can be made by the Trademark applicant or by an authorized Trademark lawyer or agent. Further, the application for registration can be submitted physically or filed electronically.

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