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If you are an entrepreneur, then you must register a trademark for your brand name or logo. Read this post to learn how to do this.
This post is for my Gruhinis, who are turning entrepreneurs. As you begin to create a mark with your skills, products and services, you will struggle to keep costs under control until you start earning even a rupee. So, to help you in keeping one of these costs under control, your Great Gruhini kept her costs low, by consulting the spouse, a legal eagle, for this post.
Often, we tend to ignore crucial aspects like registering a company, a trademark or a logo. You may decide to skip these things as it involves a cost. But you need to understand that if you ignore it for few thousand rupees now, later as the brand gets popular and gets copied by rivals and so on, you may end up paying legal fees in lakhs or crores!
So, here is a step by step guide to registering a trademark or logo for your venture.
The first step to registering your trademark is ascertaining what your trademark comprises of. Does it have a distinctive logo like the Nike ‘Swoosh’ or does it have a distinctive name like Pepsi, or a combination of both? Depending on your trademark’s USP, you may register the image, the name or both in the appropriate trademark classes.
Note that there are certain restrictions around choosing a trademark. Some of them are listed below.
i) It cannot hurt the sentiments of a society at large (For instance, you cannot use the name of a leader or religious person.)
ii) It cannot be a generic adjective (For instance, the words ‘best’ or ‘fastest’ cannot be trademarked.)
iii) It cannot describe the product or service with which it is associated (For instance, a term like ‘Soft Pillows’ cannot be trademarked.)
One of the best known trademarks, is that of Apple Computers where a word (Apple) completely disassociated with the product (computers) has transformed itself into a distinctive trademark.
Always keep a couple of trademark options available (more about this in Step 2).
Once you have selected your trademark, you will have to ascertain under which class it should be registered.
You will find various categories of goods and services divided as per their applicable classes (under WIPO classifications). It is always advisable to register your trademark in the classes of goods and services, which may be affiliated with your core business. For example, if you run coaching classes and choose to register your trademark under Class 41 (education), you may also consider registering your mark under class 16 (stationery) so that you can then use your logo on the notebooks that you would provide in your classes!
Lastly, do not apply for registration across a variety of unrelated classes, as the law requires usage of your trademark under that particular class, failing which your trademark (under that class) can get revoked!
The next step is to carry a search in the Trademark Registry. This is to confirm whether someone else has already registered your cherished trademark. Note that the application requires provision of various details, including the period of prior usage of your trademark. While the search may be carried out free of cost, it is advisable to utilize the services of a qualified trademark attorney to carry out this search. The attorney will assist you in filing a formal search request at the Trademark Registry, and you will then have a formal report, showing other trademarks which bear similarity to yours, and that would help you modify your trademark or go for another one!
For the cost conscious amongst us, note that the fees for trademark search is Rs. 500, and an attorney’s fees may range from Rs. 5000- Rs. 15,000. Well, before this makes you re-think about your decision, let me tell you that there are several online trademark legal service providers also and you could approach them.
Good luck with the search!
Depending on the results of your trademark search, you may choose to proceed with registering your trademark using the applicable forms. You can even download these forms and fill them offline.
There are trademark registries across various metro cities. The registrar for Maharashtra and Goa is located at the following address.
Trade Marks Registry
Mumbai Intellectual Property Office
Antop Hill Post Office, S.M.Road
Antop Hill, Mumbai-40037
Once again, it’s always better to hire a trademark attorney to help guide you through this process. As mentioned above, you can take services of online trademark lawyers as well.
Post application, your proposed trademark will be scrutinized by the Trade Mark Registry officials and advertised for opposition in the Trademark Gazette (most trademark attorneys subscribe to these). In both these scenarios, you may be called to defend your trademark from concerns put forth by the Trade Mark Registrar or any third party voicing concerns about your trademark. Needless to say, the services of a trademark attorney will be essential at this stage. In the course of such hearing, the registrar may ask you to a) abandon b) modify or proceed with registration of your mark.
Once you have registered a trademark, it leaves you open to revocation proceedings, that is if someone, at a later date, can prove that your mark infringes his. Lastly, remember that the term of a registered trademark is ten years. It can be renewed for a further period of ten years on payment of the prescribed renewal fees. However, non-usage of a registered trademark for a continuous period of five years is a valid ground for cancellation of the registration of that trademark at the behest of any aggrieved party.
This article has previously been published at the author’s blog.
Image of a trademark application via Shutterstock
Rachna Monga Koppikar aka The Great Gruhini is a finance writer who’s worked with
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