By Dr. Kalyan C. Kankanala
Choosing the right name, logo, device or other business representation is usually the first asset created by an entrepreneur.
Often, such representations are finalised based on a sense of emotional attachment rather than proper research. While it is important to be passionate about the business and its representation, every entrepreneur must take the following steps before finalising on a business representation:
- Ensure that the representation shortlisted is capable of achieving strong trade mark protection. Under the trademark law, a fanciful mark (newly coined word) or arbitrary mark (having no connection to business) has the strongest protection. (For example, Kodak or Apple).
While it is tempting to choose a word that is suggestive or descriptive, such a mark does not get very strong protection and must be avoided.
- Ensure that a similar mark has not been registered and is not being used by others. The can be accomplished by searching public trademark databases such as The Controller General of Patents, Designs and Trademarks, which is the Indian trademark database.
In addition to performing a trademark search, it is also a good idea to perform a general search in business directories to be doubly sure that no one is using the proposed mark.
- Ensure that you do not use a famous trademark of another company, whether or not the company has operations in India. Famous trademarks are globally recognised, and an infringement may result in the shutdown of the start-up.
- File a trade mark application in the most relevant class/classes. While approaching an attorney is advisable, this task can be performed by the start-up independently, when low on funds, by visiting the Indian trademark database. The online application process is self-explanatory and simple.
- Protection of trade mark does not arise from filing alone, though filing and registering a trade mark has pertinent advantages. It also includes incorporating notices whenever the mark is being used. This can be either an encircled ‘R’ if the trademark is registered, or a superscript ‘TM’ if the trademark is not registered.
Protection of trade mark does not arise from filing alone, though filing and registering a trade mark has pertinent advantages. It also includes incorporating notices whenever the mark is being used. This can be either an encircled ‘R’ if the trademark is registered, or a superscript ‘TM’ if the trademark is not registered.
Irrespective of whether or not a trademark has been filed, every start-up must take appropriate steps to clear trademark risks. Risk clearance can be done by performing a search to identify similar marks and analysing risk levels. A trademark attorney can be approached for the same.
Dr. Kalyan C. Kankanala is the Managing Partner of BananaIP. He is visiting faculty at the National Law School of India University (NLSIU), Bangalore, and a guest lecturer at IIM, Bangalore.
This was article was originally published on Sinapse.