Trade Marks and U(nu)sual Misunderstandings
1. I don't need to perform search..My Trade Mark is Original in toto
Applicants commonly believe that the trade name they thought is distinctive enough and don't see any need to get a search done or to get an opinion from a practitioner. Let me say something unpleasant that the name you want to trademark probably isn’t as original as you think it is, at least not in the eyes of the Trade Marks Registry. Every year, thousands of trademark applications are rejected without refunds because they too closely resemble existing trademarks. Even if your mark only slightly resembles an obscure trademark you’ve never heard of before, the Registry may still object and eventually reject your application.
Considering the huge number of trademarks currently
registered in every category, it’s a good idea to seek help and professional opinion of a trademarks attorney to ensure that you aren’t running
blindly to hit a brick wall. Ideally, your trademark attorney should
search both registered and pending trademarks, domain names with your
mark, any common law uses of your mark and any other legal issues that
could prevent approval of your mark.
While an attorney-led trademark
search won’t guarantee approval, it will position you much better than
simply filling out an application and hoping for the best.
2. My trade mark isn’t identical to an existing Trademark so It Will Certainly Be Approved
One of the most common misunderstanding Applicant have about trademarking a name is that their name
only has to be slightly different than an existing trademark in order to be registered.
Hola..! That's not the case. Trade Marks serve the basic objective of differentiating the goods or services or one proprietor from that of other. Therefore, any trademark
that could be easily confused with an existing trademark will not be
approved by the Trade Mars Registry.
For instance, you could not register a milk brand under the name “Shri. Chitale Dairy”, because this name clearly
attempts to associate itself with the established trademark of
“Chitale Dairy”. Proof that the name is actually confusing consumers is not
necessary here. If the Trade Marks Registrt deems your application to be “confusingly
similar” to another prior-registered trademark, then your application
can be denied without any refund.
3. I Can’t Use the "TM" Symbol Until the Trade Marks Registry accepts My Application
Just because the Trade Marks Registry hasn’t yet approved your trademark doesn’t mean you can’t fly a TM symbol proudly on your website or place of business. Legally speaking, attaching a TM symbol to your name only means that you are asserting a public claim of ownership to the trademark. It does not mean that your name has been registered by the TM Registry. Assuming that your name doesn’t infringe on any other existing trademarks or service marks then you can feel free to attach the TM symbol to it.
4. I Can Use the ® Symbol and the TM Symbols Interchangeably
Unlike the TM symbol, the trademark registration symbol (®) is an official indication that your trademark is officially registered with the Trade Marks Registry. Attaching this symbol to any unregistered trademarks is prohibited by the Trade Marks Act, 1999.
Until your trademark has been registered, Applicant should only use the TM or SM (Service Marks) symbols on their marks.
5. I shouldn’t use the trade mark until it gets registered
Business owners and entrepreneurs most often think that they should avoid using
their trademark until it’s been approved and registered by the Trade Marks Registry. This misconception happens because of the apprehension that if they go public
with their name, the competition might notice and try to steal their
name from them. In a competitive economy like ours, the last thing you want is for another business
to steal the idea or product you’ve worked so hard to develop. However,
when it comes to trademarking a name, keeping your name a secret is the
opposite of what you should do.
Assuming the trade mark doesn’t
violate any existing trademarks, the business owners gain “common law” trademark rights
the moment use in commerce is started, regardless of whether the mark has been
registered or not. In such case, registering a trademark with the Indian TM Registry requires you to prove that you’ve used the name in commerce with an user Affidavit and it also becomes handy in proving acquired distinctiveness for the mark.
The
smartest thing you can do to protect your name is to use it
commercially as soon as you possibly can after confirming through a
comprehensive trademark search that there are no conflicts with any
other trademarks. This way you can build a strong case to show that you
qualify for the rule of “first use” when you do file with the TM Registry.
Even if your competitors try to copy you while the application is
pending, you should be able to prove that you got to the name first –
which is the key to getting your trademark registered.
6. Competitor failed to Trademark Their Name So I Can use it..
The rule of “prior use” is common in most of the countries and just because your competitor has yet to register its
trademark, it doesn’t give you legal grounds to appropriate it
for yourself. While you can certainly pay to file an application on the
trademark that your competitor uses, your application will be open to
opposition at some point – and all your competitor has to do is prove prior use of the trademark for your application to be denied.
In general, it is not advisable to pursue any
trademarks for which your competitor can invoke the rule of “prior use”.
7. Owning a Trademark Means I Own Exclusive Rights to the Word..
A registered trademark does not mean that you own the
exclusive rights to use the mark in any context unless its a well known mark within the meaning of Trade Marks Act, 1999.
The purpose of a trademark is to protect
consumers by verifying the origin of a product or service that they
purchase. As a result, trademarks are only issued across specific
classes of goods and services. For example, there is a company called "ABC" that manufactures alcoholic beverages and a company called "ABC" that offers financial service.
While each company owns the rights to "ABC" in their respective areas of work, neither can challenge the other for total ownership of the
word.
The landmark judgement delivered by the Hon'ble Supreme Court of India in the case of M/s Nandhini Deluxe vs. M/s Karnataka Co-operative Milk Producers Federation Ltd. over the use of the mark "Nandhini" and "Nandini" in respect of hotel services and milk & milk products respectively has established that there is no exclusive right to the word particularly if the rival marks are bring no confusion in the mind of the consumer.
This is because there is no likelihood of confusion between
the two brands. The point of trademark infringement laws is to protect
consumers from two confusingly similar products. If there is no potential
confusion between the word you own and the same word appearing in a
competitor’s product, then there can be no argument for trademark
infringement.
8. Once My Application Is Approved, It Is Recognized Worldwide..
Trade mark rights are territorial in nature. Just because your trademark is registered and/or recognized in India does not mean that it is recognized everywhere else in the world as well.
A trademark registered by the Indian TM Registry is only valid in the India. If you want to secure international protections for your mark, business owners can file it first with Indian TM Registry and then apply to register it through the Madrid Protocol or even file directly in other desired countries.
9. I Own The Trademark, Hence I Own The Domain Name
Internet has achieved extraordinary significance in our lives. Most of trademark owners might wish to use their trademark as a domain
name for their business website. It is important to
understand that trademarks and domain names are regulated by two
completely different agencies in India.
Domain name isn’t the same thing as a trademark.
Consequently, it is possible for someone else to legally own domain
names associated with your trademark provided that they are not using
the domain in a way that infringes on your rights as owner of the
trademark. In that case, your only recourse is to either purchase the
domain name from its owner or to find another home for your mark on the
web.
~until next time~
Cheers!
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