Trademark and intellectual property regulations have grown crucial to global trade in the era of technology and the Internet. Businesses can legally defend themselves against rivals attempting to profit from an established brand by registering trademarks globally.
Trademark Registration Process
Step 1: Trademark search
Any expert of your choice will thoroughly search the trademark database once you have provided them with the details on the trademark application you wish to submit online and the sector in which you work.
Step 2: Class selection and document collection
Choosing the right class or classes for your business is the next step. Their professionals will assist you in making the best course selections to address every part of your business.
Step 3: Trademark application filing
Their team will start by verifying all the documents after you upload them. The trademark application form will then be completed on your behalf and submitted with supporting documentation.
The Trademarks Act, 1999 (the “Act”) governs trademarks in India. The Act allows one party to use a registered trademark exclusively and another to use it in exchange for payment.
Trademark Laws in Different Countries
USA: Common law trademark rights in the United States are derived from a mark. To get the best potential protection for a mark, it is best to register it, ideally with the federal or state governments, but this is not always practicable.
Europe: An authoritative and compelling commentary on both the substantive and procedural aspects of European trade mark law is offered by European Trade Mark Law. It gives a comprehensive overview of the two main EU trade mark regulations: the Trade Mark Directive (TMD), which tries to harmonize national trade mark laws, and the Community Trade Mark Regulation (CMTR), which enables the registration and protection of a mark across Europe.
Africa: You can register your distinctive mark under South African trademark legislation (South African Trademarks Act No. 194 of 1993) to safeguard your business interests from being abused and potentially harmful by unauthorized parties.
South America: In the single-class systems of Peru, Brazil, and Paraguay, the interested party must submit a trademark application for each class that it wishes to protect.
Trademark Search Process
Importance of trademark search
Searching for and deleting a mark early on in the process of building a brand may help you avoid the following:
- Putting money into a trademark that you could have to give up because someone else already has rights to it;
- The knowledge gathered from the search report and analysis may assist lawyers in creating trademark applications that lower the likelihood of rejections or oppositions by third parties at the trademark office.
- You might discover that the search results are useful for creating marketing materials that lessen the risk of legal challenges from owners of similar trademarks that the search turned up.
To ensure that any potential trademark infringement issues may be effectively avoided, it is important to carefully review the clearance of trademarks (or brand names, trade names, business names, etc.).
A thorough trademark search examines numerous public and private databases, including those for business names, domain names, state trademarks, news releases, and trade journals.
If there are other registered marks that, while not identical, are “confusingly similar” and so likely to cause marketplace confusion, a thorough search can reveal this to you.
A thorough trademark search necessitates access to numerous private, third-party databases and sophisticated, proprietary search tools.
Tools for Conducting a Trademark Search
1. USPTO Trademark Electronic Search System
The USPTO offers a free Trademark Electronic Search System (TESS) search engine. You may find it 24/7 at http://www.uspto.gov/trademarks, under “TESS search trademarks.”
2. The WIPO Global Brand Database
The following collections are accessible through the WIPO Global Brand Database:
- Madrid System trademarks that are used internationally
- Trademarks from affiliated regional and national offices
Keywords, names, numbers, goods and services, comparable photos, or any combination can be used to search these collections.
3. The EU Intellectual Property Office
The European Union Intellectual Property Office works with international partners and national IP offices to offer a comparable experience for registering designs and trademarks throughout Europe and the rest of the world.
4. The Canadian Intellectual Property Office
The Canadian Intellectual Property Office manages and processes most of Canada’s intellectual property. Among the areas of activity CIPO addresses are patents, trademarks, copyrights, industrial designs, and topographies of integrated circuits.
5. The Australian Trade Mark Search
It is a website resource provided by IP Australia, the Australian government’s intellectual property (IP) office. It enables individuals and businesses to look up existing trademarks in Australia’s trademark database.
A trademark lawyer who focuses on intellectual property law and trademarks can assist you in conducting a thorough search. In addition, the lawyer can forecast whether or not your trademark application will succeed and assist you in interpreting the search results, which might be challenging.
The Madrid method, run by the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland, is a centralized method for collecting a collection of trademark registrations in various jurisdictions.
It offers the following benefits to the applicant:
- One application in one place going through the National Trade Mark Office to WIPO
- One fee in one currency
- One registration number, one renewal date, covering more than one country
- There is no need for the legalization of documents.
Key drawbacks of the Madrid Protocol are listed below:
- A fundamentally registered mark is required: You cannot submit your application to WIPO immediately. The National Application phase starts the process of registering an international trademark.
- The selection of goods and services cannot be expanded: When submitting any trademark application, you must include the mark in the appropriate Nice Classification categories for goods and services.
- The registration procedure takes longer: The Madrid Protocol allows for a 12- to 18-month window for trademark registration. The trademark shall be deemed registered if the IP office of a specified member nation fails to respond to the application within this deadline.
- The possibility of a central attack: If your primary trademark is registered there, all Madrid Protocol-registered trademarks you have outside of your home country will also be nullified. This type of risk is referred to as a core attack. In addition to cancellation, the initial assault may occur if your mark is invalidated, abandoned, or if your first application is denied.
- Increased likelihood of trademark rejection: The WIPO system upholds the trademark laws of the member nations. It implies that outside parties can voice resistance on a country-by-country basis.
Trademark infringement refers to using a brand or service mark without authorization. This application, which could relate to goods or services, might lead to misunderstandings, misinformation, or uncertainty about the real source of an item or service.
Types of Infringement
1. Direct Infringement
Direct infringement is defined in Section 29 of the Act. For a direct breach to occur, the following requirements must be met:
Unauthorized use of a trademark: Under this rule, a trademark is only used unlawfully when its owner has authorised the user of the mark to do so.
Identical or deceptively similar: The unregistered user’s brand must be either the same as the registered trademark or confusingly similar to it.
2. Contributory infringement
Only one of three circumstances—the principal infringer is informed of the violation, the person is aware of the violation, or the person substantially contributes to the direct violation—must be true for there to be a contributing infringement.
3. Remedies for infringement
In India, the court may provide the following relief when a trademark is imitated or violated:
- Temporary injunction
- Permanent injunction
- Account of profits (damages in the amount of the profits gained from the infringement)
- Destruction of goods using the infringing mark
- Cost of legal proceedings
The court mandates the following punishment in criminal cases:
Imprisonment for a period not less than six months that may extend to three years
A fine that is not less than Rs. 50,000 and may extend to Rs. 2 lakh
A trademark search must uncover any active trademark applications or even registered trademarks. Consequently, employing search databases is the best course of action. Getting professional advice in this field is typically best to reach your goal.
One of Chennai’s leading trademark search online consultants, Kanakkupillai.com, is operated by Govche India Pvt. Ltd. and provides services throughout Tamil Nadu, India. A team of legal and accounting experts named Kanakkupillai seeks to promote and develop long-term success and values for its clients.