Each such byte focuses on a functional issue startups need to solve as they build their company, from idea to scale. In this 3-part edition, we share details about intellectual property law.

As a start-up starts building its unique identity among its stakeholders, trademarks become essential. As an American Historian Daniel J Boorstin says “an image is not simply a trademark, a design, a slogan or easily remembered picture. It is studiously crafted personality profile of an individual, institution, corporation, product or service.” It is important to protect these intangible assets of the company which take a lot of effort and time to build. In this part two of Intellectual Property for Start-up series, we discuss Trademarks.

What are Trademarks?

Trademarks are important for branding and business goodwill. It can constitute words, symbol, logos, or design etc. It is important for business to distinguish their trademarks by registration and to protect its use by others that can create confusion among the customers. Like Patents, due diligence is important so that you do not use the same trademark with legally protected rights, and no one is able to use the ones your business has.

We can refer the case of Milmet Oftho Industries & Ors. V. Allergan Inc wherein the Supreme Court granted trademark protection to a well-known foreign brand (Allergan). The court restrained an Indian company (Milmet Oftho) from using the mark OCUFLOX. The judgment was given irrespective of the fact that the mark was neither used nor registered in India. The court held that the respondent was the first to enter the market and adopt the mark. It does not matter that the respondent has not used the mark in India if they are the first to enter the world market. In the field of health care, it is highly important that all chance of deception and confusion should be avoided, keeping in mind that the public interest is not jeopardized.

Therefore, even if a trademark which is never used in India before but is well known in other part of the world, is also protected under the IPR. It is essential to use a unique mark with well protected IP. This is even more critical in industry like Health it is important to avoid any confusion with any other prevailing trademark.

Which are Relevant Statutes for Trademarks?

Law – Trademark Act, 1999; amended in 2010

Relevant Ministry – DIPP, Ministry of Commerce and Industry

In India, trademarks are registered under the federal registration system with the support of five regional offices: Ahmedabad, Chennai, Delhi, Kolkata, and Mumbai. The Trademark Act of 1999 provides trademark rules for the registration, regulation, and protection of trademarks in India.

How can start-ups register Trademarks?

Patent registration procedure includes:

• Conduct a trademark search. To identify a completely original trademark you may refer to the national trademark database online.
• File the application for trademark registration along with the prescribed fees.
• Once the mark is registered, the Trademarks Registry sends the “Official Examination Report” asking for clarifications, if any, in accordance with the Trademarks Act.
• After the application is accepted, it is published in the ‘Trademarks Journal’, a government publication to call upon opposition from the public, if any.
• If the application is not opposed within four months, then the registration is granted. In case of opposition, registration is granted only after the case is resolved.
• After all due consideration is met, an official letter intimating the acceptance of the application along with the trademark certificate is issued by the Trademarks Registry.

The whole process takes about 15 to 18 months. The trademark is valid for ten years starting from the date of issuance of the certificate. It can be renewed for another 10 years on the payment of the prescribed fees.

Let us know if you have questions or feedback. Reach out to us on info@caspian.in.