Intellectual Property Rights for Start ups — Part I Trademarks

Intellectual Property Rights for Startups — Part I Trademarks

This post is the first part of a four part series on the various Intellectual Property Rights. These posts give a brief introduction to these rights as well as answer a few pertinent questions that people starting up may have. I hope to write on more detailed questions in my later posts. So here we start with the most misunderstood of the lot, Trademarks.

I love the show Silicon Valley! It must be the only show that has a full episode called Intellectual Property (IP). For someone who is an Intellectual Property Rights (IPR) nerd this is a big thing. IPRs are those set of rights that give rights to things that come out of human intellect. So yes, if you are always mixing up your trademarks and patents, then these posts might be of help. Read through if you and your friends are planning to start the next Pied Piper or possibly Hooli.

What is a trademark?

Trademarks are possibly the most visible IPR, it’s impossible not to have a day without seeing, hearing or even uttering a trademark.

Trademarks could be a word, phrase or a logo and even sounds that give the brand an identity and helps consumers identify the brand. Trademarks are everywhere, from words such as Amazon, to logos such as the bitten Apple. Trademarks could even be certain sounds, the most notable being the growl of the MGM lion. As soon as you see or hear them your mind connects it to the brand, the product and the values that they stand for. Trademarks can be for goods as well as services.

How soon should I file a trademark?

It’s a popular misconception that you cannot use a trademark unless the mark is registered. A trademark is filed is to protect the mark from infringement (the use of the mark by others in their business without the owners consent). Most countries, including India follow a first to use system, against a first to file system. Hence it is the date of the first use of the mark that is given importance. The trademark registry also provides an option to mention the date of the first use of a mark at the time of application. Though you need to have some documented proof handy. Hence if one could prove that the mark has been associated with the business and there was proof of such association, say newspaper clippings, advertisements, or even domain name registration.

What should I do before filing a trademark?

Before filing for a trademark it is best to do a simple Google search to see if the marks are similar to any existing mark. It is not enough if the brand is not in India, even international brands could sue for infringement claiming trans border reputation. After which, though this might take time, you could check under which classification you would like the mark to be you could type goods or services, under the Nice classification. Once the class is determined you could then do a trademark search in India by typing in the class. Once you know that you have a unique mark, and you are ready, you could get the mark filed by a trademark agent. The process is online and you would get a receipt and proof of application in a day or two.

The process of getting a trademark, from application to registration can take any time between 8 months to one and a half years, though the registry is trying to speed up the process.

When can I use the Trademark (TM) symbol?

A question that I am often asked is ‘when can I use the TM symbol’. The ™ could be used alongside any word or logo that you intend to file a trademark for or you have applied for a trademark for. The ‘R’ can only be use once the trademark is registered. The use of the ‘R’ on an unregistered mark in India is punishable with imprisonment up to three years, or with fine or both.

To sum up, you do not need get your trademark registered before you use it. The trademark’s validity is its use and the reason why we register a trademark is to prevent others from leaching on to the goodwill the brand. Finally, that you do not use the R symbol unless the mark is registered. If you are an up coming start-up it would be prudent to spend more money and effort in building up the brand’s visibility than to spend money filing a trademark right away. Though it’s better to file the mark once people start associating the company with the mark.

The next part of the series would be dealing with Patents.

The views expressed in this article do not constitute legal advice.

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