Brand building takes substantial efforts, in terms of time, money and human resource. Its improper protection may lead to weaker enforcement of the brand, and even further dilution of the brand which shall lead all the efforts to go in vain. Sometimes, it can cost the existence of a company itself. At one-time, extensive infringement of mark “Xerox”, and lack of enforcement had made the mark almost to move into the dilution of it, where anyone and everyone would have been allowed the brand “Xerox”. Hence, for optimal and strong brand building and further brand sustaining, certain points are imperative:
While initially selecting a mark, the marketing or product team should choose a mark which
- should not be similar to any existing registered mark in a particular territory
- should be sufficiently distinctive to recognize one’s goods and services
- should not be similar to any unregistered mark which may lead to the passing of the unregistered mark’s goodwill.
Hence, it is generally suggested that the branding team should get an Identical Search or a Similarity Search for the brand being chosen. It is important to take an opinion on the distinctiveness of the mark too.
Trademark Filing Strategy
Sometimes, the brand chosen has multiple aspects which can be individually used in various marketing and selling activities. Hence, it is suggested that the mark should be filed in all the possible ways exactly how they are going to be used in future. Many times, a brand is composite of a Wordmark, Device or Logo, and a Slogan. It is suggested that each of them individually has to be filed separately, and in compositions as they are going to be used. Sometimes, one device may have sub-devices also, which are capable of being individually used. Such sub-devices should be separately filed for protection too. To summarize, the focus should be on how the brand shall be used, and all compositions suggested above which shall be used or capable of separately being used on marketing and selling material shall be filed separately. Even, if there are multiple colour combinations are to be used in a device, at least a black and white filing of the device, and also thereafter the colour combinations which are to be used should also be filed for the protection.
It’s always good that the marketing team should discuss its Branding strategy and usage of the brand in various ways with the Trademark specialist to get a clear picture regarding what all should be filed for Trademarks with respect to a particular Brand.
Appropriate Trademark Office
Once the filing strategy is decided, the next step is to prepare the application and file the same with an appropriate Trademark Office. While preparing the application, it is important to put up a “user date” if the mark is already in use, and is not “proposed to use”. The “user date” has its own importance in the trademark system, as it’s ascertained that mark has been constantly used, and have acquired distinctiveness due to its usage. Acquired distinctiveness play a very important argument in absolute grounds of refusal, where an examiner or opponent argue for the mark to be devoid of distinctiveness. The “user date” is also important in a scenario where two identical marks are existing in the system, both as an unregistered mark, or one registered and another unregistered mark. An unregistered mark which is in conflict with other marks can always take a plea of “honest concurrent use” to remain in existence along with other marks which can be either unregistered or registered. Such scenario does occur because of loose enforcement policies from a registered trademark holder.
Defining goods and services
Another aspect to look into while filing the trademark application is to properly define the goods and services. It is sometimes strategic to broadly define the goods and services, which broadly covers the goods or services being practised. However, the description provided should not be overly broad which may raise the questions for proper usage of the mark for the whole description of the mark. In such overly broad description, an opponent or interested party may file for rectification of the Trademark Register to strike out an unused description of the mark, which unnecessarily increase the prosecution for a mark. It should be noted that a narrow description of a mark may give a certain advantage to a competitor or any other interested party to work around your product or service description, and may get a mark similar to yours to be registered. Hence, to avoid the above-said scenario, it is suggested to appropriately work out the goods/ service description.
Once the trademark application is filed, the application is examined by an Examiner, who draw out an Examination report for the mark filed. Generally, the objections raised are for the absolute ground of refusal and relative grounds of refusal. The objections are required to be appropriately argued using various tactics so that to avoid further hearing, which enlengthens the prosecution cycle of the mark.
Once the mark is accepted, it is advertised and is open to opposition by a third party. This means a third party can oppose the mark on various grounds available in the Act. The opposition is generally prepared considering various grounds available in Act, which are supported by various facts. The applicant needs to counter the Opposition by appropriately preparing a response to Opposition countering various allegations made in light of various provisions of Trademark Act along with facts to support the arguments.
Once the mark is through the opposition period, either through non-opposition, or successfully countering the Opposition the mark is granted.
Please note that granting of the Trademark is not an end to the Trademark processes, rather it is a beginning to the most important era for Trademarks, which is called enforcement of the Trademarks. If the mark is not properly enforced, they may be infringed upon and further goes for dilution. Continued improper usage by the third party of a registered mark, may increase chances of lower possibility of enforcement. And, if the mark is improperly used by multiple parties, it gets diluted, and which may not be further enforceable. Hence, a Trademark owner is required to regularly screen through the commercial channels, and the Trademark Journals to identify identical or similar marks, which appears to be infringing, and should regularly oppose them before Trademark Offices and litigate them in the Courts. Hence, a Trademark Watch is an essential tool to be adopted for a proper enforcement mechanism.
Another significant point is that if the mark is not being used for more than 5 years, an opponent may apply for rectification of the Trademark Register to get the mark removed from the Trademark register for “nonuse” of the mark. Hence, proper usage history to be kept intact for creating enough evidence for usage of the mark.
As Trademark is a geographical right, hence a Trademark filing in one country provides a protection in that specific country. Hence, the Trademark is required to be filed in the countries where a company has commercial interest lying. Generally, the mark if is filed in a particular Geography should be used at the earliest in that specific geography. If the mark is not used in a particular timeline, it always holds a fear to be prosecuted before a Trademark office for the same, either at the instance of Trademark Office or at the instance of a Third party. Therefore, it is suggested that the Brand owner should create a filing strategy of Trademark which should be aligned properly to its Business Strategy, and the filing in each of the countries should be done around a time frame when the company is planning to open its business channel in a particular country. International Trademark filing can be carried out in two ways, either by directly filing the Trademark application in each of the countries or through the Madrid route, if the prospective country is party to the Madrid arrangement. However, it is to be noted that for accessing the Madrid arrangement, a base application, generally a native country application of the company should be cleared by their native Trademark office, otherwise there Madrid application shall not be processed.
At Singhwal, we support our clients end to end to develop a healthy an enforceable Trademark portfolio by employing various strategies and techniques so that you shall receive an optimal protection and enforcement for your marks.