Filing a trademark is on of the quickest of Government processes. If you have the documents in order, it can be done within two to three days. What you get, once these days pass, is the right to use the trademark symbol alongside your name. However, only two years after, subject to approval, will your trademark be registered. Many blame this on the bureaucracy, but this isn't entirely true. The rest of this piece will tell you why, along with explaining what roadblocks your application could hit during the 24-month interim period, and why your right to a trademark can always be questioned.
Why you're good to go in 3 days
Trademark registration is not a requirement. You own a trademark the moment you do business under a particular name. When you apply for registration, the registrar merely lets you use the trademark symbol beside your name. And this is more to inform other brands that you're looking to register the name; it does not give you any rights whatsoever.
The real deal is getting the registered symbol near your name. This is why you get done in just three days – because nothing has really happened.
Once your trademark is registered, though, you have several legal rights, particularly if you protect your trademark internationally using business nation- or world-wide. For example, the brand Marks & Spencer was able to completely bring to a standstill the sale of the domain name marksandspencer.com. Trademark registration is, therefore, extremely important to large businesses. At the same time, these names should actually be used for businesses to have a right over them. Cadbury, for example, lost the right to the trademarks Chocolate Éclairs, orange flavoured chocolate éclairs and Chocolate Eclairs pop last year after it was unable to prove that it was using them after they were registered.
Registrar's scrutiny – The first hurdle
After you file your application, it all starts under the watchful eye of the registrar. They have access to the millions of trademarks that have been registered in India. Remember that these aren't just words, but words within images, logos and slogans. Even though 90 per cent of these files have been digitised, you can imagine how much effort this would have taken.
When the registrar finds a similarity between your application and an already registered trademark, an objection is filed. Often enough, these are minor clarifications sought by the trademark officer. It's possible, for example, that you've asked for a particular word to be trademarked under a certain class (say, technology) and the word has already been registered under another class (say, textiles) and the registrar would like to understand your business and the likelihood of conflict between the two. If the registrar believes your trademark is likely to mislead consumers, an interview may be called.
Even in the absence of an objection, this step can take up to four months. With an objection, this may get further pushed to even eight months.
Journal advertisement
If the registrar finds no reason to object to your application, it will be advertised in the Trade Marks Journal . Any other business that believes it adversely affects their brand may file an opposition within four months of this advertisement. Note that even if your brand name is similar to another brand, an opposition may be filed. If one is filed, the matter could prolong even beyond two years. This is because each party will be involved in submitting evidence to the registrar stating their claim to the name over a six- to eight-month period.
Always open to question
Even if your trademark is registered, there is still every chance of a case against it. This is because businesses are not constantly checking the Trade Marks Journal . Furthermore, even businesses who've not registered the trademark can take you to court over your trademark if they can prove that they have been doing business under the name before you in a given area. Finally, trademarks are territorial; if an international brand comes to India, it is possible for it to put a stop to local brands operating under its name. For instance, the international clothing brand Zara was able to stop Chennai-based restaurant chain Zara Tapas Bar from operating under this name, even after the latter's assurances that it would not expand into any other field of business. Henceforth, the restaurant now goes by the name ‘The Tapas Bar’.
The subject of trademarks, therefore, is highly subjective. What matters above all else is its likelihood to deceive consumers. If it is likely to do so, it doesn't matter whether you've been conducting business under the name for a decade, the owner of the brand can put a stop to you using it.
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