How to Protect Trademark

How to Protect Trade Mark / Brand / Logo / Domain

Registration of trademarks is one of the important protections that businesses should avail. Many foreign and domestic Applicants have been able to successfully register their marks in India. Indian courts have upheld many of those registrations and granted favorable decisions to rights holders.

In addition to the registering of their trademarks, businesses need to adopt other strategies for protecting their trademarks. Some of them are mentioned below :

• Get clearance searches conducted in the Indian Trade Marks Registry in the classes that are of interest to the business including the ancillary classes. We shall be glad to assist you in this.
• Get common law searches (this includes the internet, market surveys, yellow pages and directories) conducted to ascertain whether third parties are using your trademarks and if so, the extent of such use.
• Based on this information and after seeking our opinion decide if the trademark is available for use or not. Should the trademark be available for use, immediately apply for the registration. The rights holder should also consider hiring a watching service to monitor the trademark journals in order to alert them to any published, deceptively similar trademarks or descriptive trademarks that might be of concern.
• Should the rights holder own a trademark that has been used and has acquired goodwill and reputation, it is advisable that along with filing of the trademark application in India, they should also make press releases, publish cautionary notices and advertise the mark to ensure that the relevant section of the public is aware that they are entering the Indian market and are protecting their trademark from any kind of third party violation.
• It is also important that the rights holder not only register trademark in India but also in the Indian sub-continent i.e. in the territory of Pakistan, Sri Lanka, Bangladesh, Nepal, Bhutan, Maldives, Afghanistan and Burma. These countries are in close proximity to each other and as India is the biggest market amongst all of them, any trademark, which acquires goodwill and reputation in India, is likely to be copied in these markets. This could lead to not only counterfeit products being manufactured in these countries but also result in counterfeit goods being imported to India and various othercountries across the world.
• The rights holder should also take immediate steps to register their domain names [top level domain names (tLDs) including country coded top level domain names (ccLDs)] in the Indian sub-continent, as there have been many instances of third parties registering domains for certain well known marks with the intention of extracting money by selling these domain names to the rights holders.
• Should the rights holder discover that their trademark is being infringed, they should take immediate steps to protect their trademark, either by the means of filing oppositions, cancellations, conducting investigations, sending cease and desist notices or initiating appropriate civil and criminal actions.