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This article is written by Sabrina Hilali.

Abstract

Trademark branding is the weapon that protects a trademark from being stolen, misused, copied by ensuring its safety. Trademark of an organization not only plays an important role to attract consumers to the product or service but also it guarantees the quality and value of the service or product. This paper intends to show the significance of trademark branding for startups, it seeks to compare trademark branding on a various country basis. Also, this paper especially highlights the significance of Trademarks for a startup company, how trademark protection can be used country basis and worldwide. The purpose of this paper is to bring out the deeper importance of trademark branding to the individuals so that an individual can take notice of the trademark before starting a startup company, how a trademark can affect certain points of organization in case of highlighting the product or service’s quality or value and a trademark must be protected.

Introduction 

Trademarking a company name and its logo is a basic piece of each business, to make the products and services unique and unmistakable from different companies with the goal that some other rival company can’t take or duplicate their brand. Especially, it is most important for a startup company to have its trademark registered as soon as possible. With the assistance of a trademark, a specific Brand gets assurance under it. 

Several brands can be owned by a company. Similarly, a company can have numerous trademarks for the protection of the brand. It scarcely matters the number of trademarks is expected to ensure a brand; it absolutely relies upon the components of the brand. When a brand interfaces with the consumers, it should be ensured and that is the place where a trademark is necessary. 

Trademark law keeps an outsider from utilizing a Trademark, which is confusingly similar to the trademark of the startup. Befuddling similarity relies upon various elements, including the closeness of the trademark, the products or administrations and appropriation channels. Descriptive words, for example, Apple for an Apple-based working framework, are hard to secure. Indeed, a few words can’t be secured under trademark law: the overall term for a kind of merchandise (a Generic term) can’t be utilized as a trademark, since all organizations in the market require it. 

Prominence of trademark

At the point, when a brand has been utilized to cooperate with the consumers, it absolutely should be secured and the assurance is guaranteed by Trademark. The brand needs assurance so that some other individual or organization can’t utilize a similar trademark and the client doesn’t get befuddled between the original product and duplicated product, because of the comparative trademark. Nowadays, the business trademark of a brand has been taken very seriously, as the trademark they use can be essential to attract the consumers as well. Like, if any company utilizes some catchy brand name, color or phrases, it needs to take more consideration of the buyers and customers in all likelihood will want to try the product. Henceforth, the centrality of trademarks is huge in business. In Startups, it is imperative to have the enlisted and interesting trademark of its brand as well, since customers, at a times, judge the nature of a product through the trademark of the brand.

Trademark global issues & obstacles 

Trademark is not a global mark, it is essentially a state to state, nation to nation type of mark. In the manner, copyright is applicable for worldwide effect, however, a trademark isn’t that way. As even the international treaties for trademarks don’t work straightforwardly. Under the Madrid system, we can register trademarks universally, yet from the start, you have to file for a trademark first in your own nation. 

Trademarks have nation based on different laws. For example, the USA is a ‘First in Use’ type state, who has used the trademark at first in the USA and they get the first priority, whether their trademark is registered or not. In the other way, China is a ‘First to File’ country, whether your trademark has been used or not, if it is not registered the trademark does not get any priority; it varies for different countries. In Bangladesh, the trademark is also recognized as ‘First to Use’ and ‘First to File’ both, as it depends on the situation and certain conditions. In the case of First to Use, it must show exact proof it has been used first during trademark infringement. 

Priorities & usage of trademark

The prevalent trademarks are- TM– Trademark, Registered Trademark (®), Service Mark (SM). Usually, the companies who have their trademark registered, they most probably use ® Registered trademark for it. But the companies who use TM doesn’t mean that their trademark isn’t registered, it can be registered or not registered, the usage of the sign completely depends upon the company’s wish. And, SM is used when the trademark application has been filed but the application is still pending before the registry; in that situation, a company uses SM as Trademark until their trademark is not registered. (For this trademark, the application for the trademark is pending before the registry). 

Actual usage of designation as a mark that creates rights and priority over others. Trademarks priorities usually depend on 2 matters. They are-

  1. First in Use- The Trademark which has been used first, gets more priority in some countries, whether the trademark is registered or not. For instance- the USA is the first to use this country. Even if your trademark is registered in the USA but hasn’t been used, where some other company with similar trademark has been using the product; the company which has been using the product gets the priority than the other company despite the company’s having registered trademark. 
  2. First to File- In case of first to file sorts of countries, the company who has filed for a trademark first, they get the most priority than the company who has used the trademark first. For example- China is first to file type country. 

In India, trademarks which have been registered first, get more priority too. But the trademark which has been used first gets priority too, under the Trademark Rules, 1999.

Trademark abandonment

The Trademark is considered to be abandoned if it has not been used in a certain period of time. The trademark abandonment period differs for different countries too. 

Such as-

  • According to the Indian Trademark Rule 38(5), if no answer or correspondence to the assessment report is received inside one month from the date of issuance of the report, the application will be considered to have been relinquished.
  • In the UK, if a trademark has not been used in 5 years and there has been no objection, the trademark is considered to be abandoned.
  • In the USA, if a trademark hasn’t been used for 3 years, the trademark is considered an abandoned trademark. 

Risks of losing trademark rights

For Copyright & Patent, there is fixed time and till that period copyright or patent lasts. For instance- Copyright lasts for 70 years plus life, and patent lasts for 20 years. But a trademark can last forever if it is in use. Mainly, for three reasons one can lose a trademark. The reasons are- 

  • Non-usage & abandonment.
  • If a Trademark becomes too generic.
  • If a Trademark becomes deceptive. 

If you do not use a trademark for a certain period of time, then the trademark can be considered as an abandoned trademark, that’s why keeping a trademark in use is very much important for it to last forever. Trademark must be distinctive but it shouldn’t be deceptive, otherwise, the company can lose the trademark rights over their trademark. 

Filing for a trademark before using it

You don’t need to postpone your trademark application until you’re utilizing your proposed mark. In the USA, you can document a trademark application on both of two bases. You may document an application for a mark on the premise that you are now utilizing it in business, or on the premise that you expect to utilize it in business. 

Nonetheless, while you can begin the cycle-dependent on Intent to Use, when your mark is permitted, you should exhibit utilization of the mark to have it continue to registration. 

In Canada, your documenting choices are comparative, and, starting today, you are additionally needed to show use preceding enrollment. On 17th June 2019, the utilization necessity is being dispensed within Canada. At this point, you don’t have to give grounds to recording nor you actually have to demonstrate that you’re utilizing the mark for the motivations behind registration. 

You may, nonetheless, actually be dependent upon a solicitation from the Registrar to utilize the trademark. The most punctual such a solicitation can be made is three years following the date of registration.

Importance of trademark registration 

Trademarks should be registered at the very beginning of starting a startup company. Trademark is not like Copyright, where in most countries automatically you are covered by copyright law the moment you create something new. For Trademark registration, you have to pay the registration fee and file some papers to the government. In maximum countries, if you do not file for a trademark, you do not have any kind of right over your trademark, an exception is the USA. In India, non-registered trademarks get priority too under Trademark Law, 1999. But in most countries like China, if your trademark is not registered, then you have zero rights over it. In the case of Bangladesh, as per the Section 20(c) of the Trademarks Act 2009, a trademark is registered with retrospective effect from the date on which the trademark application has been filed, which is clear that trademark registration has importance in Bangladesh too. 

That’s why, it is important for the security of the trademark, it must be registered. Also, trademark registration is necessary for global and online business too. There is a Madrid system for doing worldwide business. But in the Madrid system, at first, you have to register your trademark in your own country, only then you can file for the registration under the Madrid system to make your trademark globally usable.

Hence, it can be said that trademark registration is very significant for the protection of one’s trademark. Even to file for a suit, a registered trademark usually gets the first priority in most countries.  

Decision of trademark is subject to limitations

You may definitely realize that you won’t have the option to register a mark that is being utilized by another person for the equivalent or comparable products or administrations.  Nonetheless, as you think about your trademark, you ought to likewise remember some of the extra impediments on registrability. A few words mix thereof, or pictures won’t be registrable paying little heed to their accessibility in any case. 

In Canada, for example, you won’t have the option to register a trademark consisting of a name or family name, a word in another dialect, or a word or picture that intently takes after a disallowed mark. Another mark you can’t register is an obviously illustrative mark. A plainly unmistakable mark depicts an element of the merchandise or administrations with which it is to be utilized. For instance, you probably cannot register “Cold” as a brand name for use with Cold Coffee. This limitation is set up to guarantee that different brokers can portray their items and administrations without being sued for brand name encroachment. 

To be registrable, a mark additionally can’t be non-descriptive, as in it is deluding to people in general. In case you’re selling little jugs of coconut water, you probably would not have the option to register “Milk Shots” for example. 

When you present your trademark application, it will be inspected to guarantee that it fulfils the prerequisites for a registered trademark in that ward. On the off chance that it is discovered not to consent, the analyst will give a report with that impact and the registration of your mark will rely upon your capacity to beat the inspector’s complaints.

Case studies of trademark

  • Crocs Inc USA v. Bata India Ltd and Ors.

Crocs USA documented bodies of evidence against shoe manufacturers charging infringement of their design no. 97685 which is valid up to 28.05.2019. The plaintiff was fruitless in a suit petitioned for plan encroachment as the plans on which the suit was recorded were discovered to be not new or unique and in this way, the Plaintiff squeezed for the order on the ground of passing off, which is an activity in precedent-based law. It was settled by a prior judgment of five adjudicator seats that as long as the components of configuration are not utilized as an exchange mark, yet a bigger trade dress get up, presentation of the product through its packaging and so on, given that a passing off claim can sustain. A passing off has been held to be viable as for components of trade dress and in a general outfit, other than enrolled plan and not with deference to the registered design. 

It was argued by the Defendant that if the passing off is claimed of elements of the design as a trademark, no passing off action lies. Since the offended party itself depended on the utilization of its enrolled plans as a shape exchange mark and no extra highlights qualifying as trade dress, which are not part of the registered design have been pleaded or pointed out, the passing off suit is not maintainable. The court concurred with the Defendant that the offended party has not had the option to show any additional highlights, other than the plan, which is utilized as a trademark. Hence, the court offered an input that not just the enlisted configuration can’t be a trademark during the time of plan enrollment however even from that point. Likewise, the court held that an enlisted configuration can’t comprise an exchange mark; notwithstanding if there are includes other than those enrolled as a plan and are appeared to be utilized as trademark and as for which goodwill has been obtained, it is just those additional highlights which can be secured as a trademark. When there has been a copy of the registered design, that time an action for infringement under the Designs Act only would lie.  

  • Big-tree Entertainment Pvt Ltd v. D Sharma and Anr.

The Plaintiff had recorded a suit for trademark infringement, looking to control the utilization of trademark “BOOKMYEVENT” or prefix “BOOKMY” by the Defendant. The court would not concede an order as the prefix “BOOKMY” is extremely normal in the English language and the enhanced visualizations are likewise totally different, so it is unlikely that the customers would be confused by the said trade names or marks. The court also mentioned that the mark ‘BOOKMYSHOW’ belonging to the plaintiff has not attained any exclusivity.

Conclusion

For business, trademarks undoubtedly play a significant role. Whenever you are doing a business or thinking about starting a startup company, the first thing you must do is to get the trademark of the brand registered, for the security of the trademark and to maintain the quality of the product in the eyes of the consumers. If you are thinking of selling your products globally in future, then registering your trademark is essential in all the countries you are planning to spread your business later on, before any other company can register the same trademark in the particular countries. Even if you spread your business later, you can have your trademark registered in the planned countries from before so that anyone else cannot register the same trademark before you.  

Moreover, a trademark is essential part of any new business for the protection of the brand and other elements related to it.

References

  1. WIPO Academy
  2. Protecting Business Innovations through Trademark Course- The Hong Kong University of Science & Technology  
  3. https://startup.unitelvoice.com/trademarks

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