In today’s business world, the registration of intellectual property is extremely important to protect its ownership and the performance of the underlying business. From a Company Secretaries perspective, this article is aimed to raise awareness of the necessity of registration of a brand before it is made public.
The rapid pace of digitization and use of information technology is driving change across the entire world irrespective of the economic status of countries. This creates improvements in operations, and business models in all sectors within government, entrepreneurial, and private institutions.
Since majority of information is kept in electronic form and linked to virtual platforms via internet and Intranet; risks such as theft, plagiarism and other types of infringements of intellectual property rights are ever-present. For example, once you launch your brand name/logo before filing a trademark application it is vulnerable to aforesaid threats as you do not have any legal protection.
This is where it is critical to plan for the protection of the brand even before the registration of business vehicle whether it is a company, partnership or any other form. Most of the entrepreneurs start thinking about the registration of their trademark only after their brand is established in the market. At this point, it may become too late to file their application to the relevant authority if other similar or identical trademarks already find their place in the trademark registry. It is important to remember that in cases of trademark disputes, registration is the prima facie evidence to support your claim.
A professional who is involved in the process of business start-up services is the best person to advise his clients on the requirement of registration of their trademarks at the initial stage of business set up. The issue of registering other intellectual properties like Patents, Copy rights may arise only after commencement of business.
An analysis of applications filed during last few years with Registrar of Trademarks in India, reveals that majority of them faced either objection or opposition and the filing were left abandoned. Planning before filing is the only option to avoid loss of time, money, and such situations. Identification of exact class of intellectual property and any ancillary classes relating to the goods/services is the first step. A careful trademarks search utilizing all the options available with IP INDIA website will help professionals to provide at least an initial picture on the availability of proposed Trademark. Based on this search report, an entrepreneur may move ahead either for filing an application for their trademark, or re-designing for a new, unique one.
As mentioned earlier, registration of an existing brand name will be more difficult if there are similar or identical trademarks already within the registry, and there is no other option for the entrepreneur other than their existing trademark. Such situations will lead to legal contentions and litigations. Therefore, it is necessary for any entrepreneur to establish and demonstrate their claim on the use of trademarks (continuous previous use) for defeating any objections/oppositions during the application process or before any court. In this scenario, a well drafted application prepared by a professional and filed at the initial stage of business set up will support your claim.
According to Rule 25 of the Trade Marks Rules, 2017,
1. An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application.
2. In case, the use of the trademark is claimed prior to the date of application the applicant shall file an affidavit testifying to such use along with supporting documents.
Supporting documents to be attached with affidavit and statement of previous use are not specifically mentioned in the Trade Marks Rules, 2017, but it is essential to prove that the previous use of applied trademark is related to the goods or services mentioned in the application. So even if a company is unable to file its trademark application at the initial set up stage, it should at least start collecting evidence to prove the start date of the trademark’s usage.