8 Oct 2020, 09:40 — 7 min read
What’s in a name? That which we call a rose by any other name would smell as sweet”. Quote from Romeo and Juliet by William Shakespeare. While Shakespeare may have said that a name does not matter, in the Business World, the name of the entity can make a lot of difference. We associate trademarks, brand identities, standards for service often with the name of the company. Trademark disputes over brand names can also involve expensive litigation. In this context, the recent controversy that Patanjali found itself into for naming its immunity booster “Coronil” is worth discussing. Against the background of this legal issue, we address crucial questions about choosing a name for your company.
In India, the Trademarks Act governs the process of grant of a trademark. It is the Registrar of Trademarks who is the authority for the first grant of a trademark.
Here are five handy tips to help you choose a trademark and avoid the risk of a trademark dispute or rejection at a later stage
The law of trademark gives primacy to the firm that has established first use. The proof of “prior use” in the trademark is likely to give you an edge over a competitor or another person using the same mark. This primacy to prior use often supersedes registration. Thus, if you started using the name first and someone else possesses a trademark registration for the name, the courts may still award the trademark to you.
It is a good idea to first run a trademark search to see if there exists any similarity in the trademark sought to be registered by you. A word mark search traces the similarity in words, sentences, or phrases used in your trademark. However, you will also need to do a phonetic search for verbal similarity. You can also use the free trademark search facility at Vakilsearch.
This is probably one of the greyest areas of trademark registration, often leading to disputes. Take, for instance, the word “Nirma”, which is a well-known trademark business for washing powder. However, this does not mean that no firm in any industry can choose the word “Nirma”. While a washing powder or chemical company would be disallowed from using this word, a company operating in another industry can still make a case for trademark registration. Moreover, similar-sounding names such as Nirmal, Nirman, and Nirmax are also trademarks that have been granted registration.
The trademark registration or business registration works on a system of “class of goods” where goods of one kind that clubs under one class. Correctly classifying your product under the appropriate class is also important. The Registrar would then begin the process of assessment to see if your mark aligns closely with any other already registered mark. Based on this assessment, your trademark may be refused.
In case of a trademark query regarding similarity with another mark, demonstrating differences in your mark from an existing trademark would be essential. Providing evidence of the use of your mark, establishing its distinctiveness through market share, accurately describing the ingredients of the mark are some of the ways. Every trademark objection or refusal response must be tailored with adequate proof to show that the two marks belong to different categories of goods or a different industry, business, or trade.
Vakilsearch’s wide network of trademark professionals can also help you trace and plug legal loopholes in your chosen mark.
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Disclaimer: The views and opinions expressed in this article are those of the author and do not necessarily reflect the views, official policy or position of GlobalLinker.
Posted byVakilsearch Staff
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