• How-to

Step 1: Choosing a ‘class’
Every business which wishes to apply for a trademark has to decide the categories under which it wants protection. In all, there are 45 categories/classes in the Trademark Act. While categories 1-34 deal with goods, classes 35-45 deal with services.
a. Let’s say, for example, that you want to register your brand of soap called Jeet. A soap being a product, you have to see which class it falls under. Soap falls under class 3. If you want to register your logo in addition to your name, you have to separately register both (but under the same class).

b. Even after you register Jeet for your brand of soap, another company can use Jeet for paint, automobiles or even legal services.

c. To be on the safer side, therefore, register Jeet in all the areas where you currently operate or wish to diversify into in the future. The more areas you are registered in, the more protection you will get.

d. Finally, although Pepsi does not make soap, Pepsi is very well-known. Using a name like Pepsi is not allowed even for other industries because it is a well-known mark. Check if the trademark you are seeking to protect may be disqualified by virtue of being well-known.

Step 2: Checking if the trademark is available/making an application
a. After you have a fair idea about which class you want to register your trademark under, you can visit a reliable trademark vakil to check if there are similar trademarks already registered under that particular class.

b. Authorize the lawyer to act as your agent to perform the trademark registration process. The trademark fees, levied by the government, are Rs.3,500 per class, and a lawyer will typically charge Rs.1,000-Rs.4,000 per class as legal fees. The lawyer will check if the trademark you want is available.

c. Then the lawyer will begin to draft your trademark application. If the name/logo is unavailable, you can change it. If someone has a similar trademark which you think should belong to you, you can file proper opposition proceedings with the help of your lawyer.
An important decision you have to take here is deciding in whose name the application should be: in your name or the name of your company.
If you register the trademark in the name of the company, it will be owned by the company, which means its shareholders. These shareholders can change from time to time.
In fact, it is not difficult to register the trademark in your own name and enter into a trademark license agreement with the company. You can always revoke the agreement if you want to close/quit the company.

Rejection of trademark
The fact that your lawyer has performed this search does not mean that the Trademark Registration office will accept the trademark. They could reject the application for a number of reasons which could include:
Trademark is merely ‘descriptive’: If your trademark is merely describing what you sell, you will not be able to get a trademark for it. For instance, starting a car company called car and getting a trademark for it will be difficult.
Trademark is ‘non-distinctive’: Your trademark should not be similar to the trademark of an existing company.
Trademark is similar to a well-known trademark: As an extension of the previous point, if you use a trademark which is similar to a big name or ‘well-known’ trademark, it will be rejected by the trademark office.

Step 3: Post application
After your vakil has filed a trademark application, make sure you get a receipt. A few days later, your vakil should send you the Original Representation Sheet of your trademark application. After this, it takes 16-24 months for you to get your trademark granted by the Trademark office.

Points to remember

1. Registering your trademark in India, this country being your place of doing business, should be done first before you seek protection in other countries.

2. You can use the ® symbol next to your name/logo only if you have a registered trademark. If not, you can only use the ™ symbol next to your name. Using the ® symbol without having a registered trademark is an offence.

3. If you are an entrepreneur, remember this: Having a trademark can save precious time and money in case a dispute arises. If you do not have a registered trademark or have not applied for one and a dispute arises, you will have to go through the much more difficult process of showing that the person copying your name/logo is trying to pass off his product/service as yours.

4. Additionally, investors carry out a thorough check of the intellectual property protection a firm enjoys before they invest in a concern. Not having even protected your trademark could affect your exit/acquisition.

©Entrepreneur May 2011

Hrishikesh Datar is the CEO of vakilsearch.com.

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brand, business, CEO, class, Hrishikesh Datar, Logo, register, TM, trademark, vakilsearch.com, ®