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Paras Mehra

CA Paras Mehra is a thinker, writer, reader and speaker. He is also professionally associated with hubco.in, a brand for trademark registration and other related services.

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5 Checks to Apply Before Filing for Trademark Application

As said, trademark is something which is very important and should not be taken any lightly.

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Rajeev Raman is one of my friend started his business under a brand name. He was very eager for his business so he started it by investing around 50 lakh rupees. He was also aware of the local trademark laws, so did filed a trademark registration for his brand/logo. He invested lots of efforts to establish his business and his brand.

As said, with all his efforts, his business soon started flourishing. He was printing currency until he received a notice from his competitor that the trademark which he is using is an already registered trademark and he is infringing a registered trademark and therefore he is liable to damages. The company filed an official compliant regarding the infringement of trademark and prohibits further use of the trademark.

This made Rajeev left astonished. He said that even he has applied for the trademark and then how it can be infringement of trademark. Then he suddenly checked his trademark status online and found that the same was objected on a similar ground that it resembles to an existing registered trademark. This had happened because Rajeev did check the trademark before filing and which ultimately resulted into cessation of his business and also liable to damages.

Learn from above story

Take the above story very seriously as this could happen with anybody hence, it is very important that you should take proper precautions before applying for trademark. You must understand that trademark is not a small thing which could be filed without any proper check and hence, you must put all the available checks on the trademark and once you are satisfied that it is unique then file it and start your business.

For you, we have marked the 5 checks which you should apply to avoid rejection and case of trademark infringement.

What is a trademark infringement?

Trademark infringement means when you use a mark which is identical to another registered trademark. In that case, you shall be liable for damages and if criminal charges are convicted then you shall also be liable to imprisonment.

Let us understand the available checks before applying the trademark:

#Check No.1 – Search the TM Properly: The first step is to search the trademark availability before the applying the same. The same can be checked via public

search
available online.



Further the following steps should be followed for a proper trademark search:


- Select the search type as “wordmark.” Then write your trademark in column adjacent to “start with.”
- If your trademark is not available in the first go then drop it, or else if it available then move to change the “start with” option to “Contains” and re-do the search.
- Further, after that change the search option to Match with and search your TM again.

Once the first type of search is complete, and then move to change the search type from “wordmark to Phonetic”.

Under phonetic search, the trademark systems checks whether the pronunciation of mark is same or different. E.g. Coke is a registered brand; however, if someone wants to register KOKE, then it shall not be given because they are identical to each other (phonetic).

Important Points: Whatever search you perform, you must perform it in your respective trademark class.

#Check No.2 – Prohibited Words: Once you have gone through the first search, the next step is to go through the prohibited words. If your trademark is identical to any prohibited words, then you must drop your trademark because the same is restricted by law.

The list of prohibited

words
is also available on trademark website.

#Check No.3 – Well known marks as prescribed:
Once you have gone through the prohibited words, the next step is to check whether your trademark resembles with any well known marks. The trademark department maintains a list of well known marks. If your trademark is identical to any well known mark maintains by the TM department, then you have to drop your trademark as it will not be registered.

The list of well

known marks
is also available on trademark website.

#Check No.4 – Well known marks which are not prescribed: Once you have gone through the well known marks, then also it is not mandatory that your trademark will be accepted. You have to verify on your own whether your trademark is not volatile to any law and it does not resemble with any trademark which is used by any existing running business.
Because if that person proves that he is the original user of the mark, you trademark department shall cancel your application.

#Check No.5 – Logo Search: Logo search is difficult because there is no formal mechanism through which you can search that whether this logo is unique or not. However, to keep your logo unique makes sure adhere to the following guidelines:

- Never copy your logo from any website, google etc.
- Try to make your own logo with original design.
- Never copy your logo from any big website or any establish business.

Conclusion

As said, trademark is something which is very important and should not be taken any lightly. It is something that defines your business and hence keeps it original. Further, trademark system is so complex that even after these checks your trademark may face objection or opposition but the chances of these objection and opposition would still be very less.

Hence, do follow proper search before filing the trademark application.

Disclaimer: The views expressed in the article above are those of the authors' and do not necessarily represent or reflect the views of this publishing house


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