Common Mistakes in Trademark filings

A successful business demands perseverance, and understanding the importance of creating a unique trademark is crucial to that success. Most businesses and entrepreneurs only have a vague understanding of how to legally protect their brand identity.

Without proper trademark protection, business name, logo and product could be copied or misused by others, leading to confusion and possible loss of customers. A registered trademark grants exclusive legal right to brands for promoting the kinds of goods and services provided by them, creating reputation and monopoly in the market.

The frequent mistakes made by businesses and entrepreneurs while filing for trademark applications have been mentioned below –

1. Conducting Insufficient Research – Most startups tend to avoid this step because of the general assumption that their brand name is ‘the only one’ in the competition. There can be a bunch of same-named businesses in the market, which are unregistered, creating confusion in the minds of the consumers. To perform a full search for similar marks, names and logos, entrepreneurs may use official databases, e.g., IP India, WIPO, etc. Following which they must consult an IP attorney or seek professional advice for detailed assessment.

2. Using Generic Names – An important step towards creating reputation in the market is by making a company’s identity distinguishable from other companies. Band-aids, xerox, air fryer etc. are generic names due to overuse by the public in reference to the general product itself. Therefore, it is crucial that a trade name is suggestive of its product. For e.g. NETFLIX, OLA, APPLE, which suggests the products and services provided by them. A fanciful or arbitrary trade name is highly in favor of getting registered.

3. Postponing Registration – To seek appreciation and recognition of company’s unique creativity, they make a huge mistake of disclosing their unregistered brand name in the public domain attracting imitators resulting in infringement. For example – Burger King operates under the name “Hungry Jack’s” in Australia as the former tradename was already registered by a local restaurant. Therefore, early filing of trademark is recommended to create monopoly in the market. Once a trademark has been registered, the company receives a Trademark Certificate.

4. Misclassification of Goods and Services – Trademarks are categorized according to the Nice Classification system as administered by World Intellectual Propoerty Organization (WIPO). There are 45 classes, out of which 1-34 are classified as ‘Goods’ and 35-45 are classified as ‘Services’. A business selling musical instruments will select Class 15 whereas a business providing medical services will select Class 44. It is suitable to select several classes for businesses dealing with wide variety of goods and services, to get protection for each of them.

5. Neglected Monitoring – It is important to regularly check the status of the application on the Indian Trademark Registry online portal after the filing of the application. Overlooking status progress may lead to dismissal of application due to missed deadlines, further resulting in loss of exclusive rights and extra expenses. Trademark watch services help detect and prevent unauthorized use of similar trademarks by monitoring filings and alerting owners of potential infringements. They monitor trademark databases and alert owners when similar marks are filed.

6. Delayed Renewal of Trademark – A trademark is valid upto 10 years from the date of registration and must be renewed (Form TM-R) within 1 year upon its expiry. If initial deadline is missed, a grace period of 6 months is given to file for renewal along with surplus charges. Further, on the lapse of grace period, restoration of trademark can be done by submitting the reason for delay along with required fees. Losing rights over trademark can cause significant damage to the business valuation and becomes prone to unauthorized use or registration of the same trademark by competitors. A Trademark Renewal Certificate is given to the company as a document of proof.

7. Avoiding Legal Expertise – It is always better suited to seek legal advice to prevent legal complexities involved in trademark filing. Going solo in such related cases often leads to delays, objections or rejections. Consulting with an IP Attorney, who understands the regulatory compliances, classifications, objections and enforcement strategies can improve the chances of successful registration.

8. Unknowingly Violating Trademark Rules – Under the Trademarks Act, 1999 certain categories of words, images and symbols are not allowed in a trademark application.  For e.g. National symbols (Ashok Chakra, Emblem of India), names or representations of religious figures, vulgar words, obscene visuals and hurtful to public sentiments. To avoid public backlash or legal actions, businesses must review Section 9 and 11 of the TMA, 1999 to understand what is deemed non-registrable.

9. Not Securing Brand Internationally – Trademarks are territorial which means a trademark registered in India will not be protected in international market. So, if businesses plan to expand globally, it is necessary to register their trademarks in other countries by filing an application with the Indian Trademark Office. As India is a member of the Madrid Protocol, filing in multiple countries become simplified and easier to seek protection in 131 member countries.

10. Short-sighted Brand Strategy – Businesses fail to strategize their future growth or consistently use their brand elements across different platforms, which leads to limited business opportunities and weakens brand recognition. If brand name, logos, fonts or taglines are not consistently used in packaging, websites and advertisements, then it can create confusion in the minds of the consumers and raise doubt about the ownership and distinctiveness of the brand. For example, SNICKERS uses its unique trademark on all its peanut bar packaging to distinguish it from other peanut bars. Similarly, registering trademarks for newly added products and services is a smart approach to avoid unnecessary troubles in future. For example, NETFLIX has recently expanded their brand from online streaming services to merchandise products such as clothing, beverages, foods, accessories etc.

THE PROCESS OF TRADEMARK REGISTRATION – It is important to know the steps for registering a trademark so that mistakes can be avoided thus, reducing the chances of application rejections.

1. Trademark Search – Mandatory search for similar trademarks in India and abroad before filing.
2. Filing the Application – Submission of Form TM-A with correct classification and documents.
3. Examination of Trademarks – The Registrar reviews the application and raises objections if any.
4. Response to Objections – To provide necessary clarifications and modifications to the filed application.
5. Publication in the Trademark Journal – Once the trademark is accepted, it is published in the Trademark Journal to inform the public. Objections can be raised by the public within a specific period if they believe that their rights have been infringed.
6. Registration Certificate – A registration certificate after publication in the trademark journal, given that it had been accepted and that no objections were filed within 4 months of such publication.
7. Renewal – Trademarks must be renewed every 10 years to remain valid. A Trademark Renewal certificate is given on successful renewal of the trademark.

IMPORTANCE OF EARLY AND ACCURATE TRADEMARK FILING

Filing for trademark protection at the earliest opportunity and ensuring the application is accurate brings several significant benefits to a business.

• Safeguarding Brand and Reputation – Correct filing ensures legal protection to brand identity, preventing others from imitating or misusing trade name, logo, or other distinguishing marks. It maintains the brand’s reputation and safeguards the goodwill built with consumers.
• Prevention of Legal Disputes – Taking early action to register trademark helps in avoiding costly and time-consuming legal conflicts related to infringement. Establishing clear legal rights pronto, minimizes the likelihood of conflicts with other businesses over similar trademarks.
• Building Market Dominance – A registered trademark signals authenticity and reliability to consumers, reinforcing their trust in the company’s products or services. Establishing distinct market position enhances brand recognition and encourages consumer preference over competitors.
• Increasing Business Valuation – Trademark registration is an important asset that can increase the overall value of any business. A registered trademark intimates to potential investors that the brand is legally protected and professionally managed, fostering trust and supporting investment decisions.
• Protects Brand Globally – Trademark registration paves the way for smooth expansion, both nationally and internationally. The Madrid Protocol has simplified the process of trademark filing. It requires a single application to be filed with the Indian Trademark Office rather than filing in multiple countries.

CONCLUSION

Trademark registration goes far beyond paperwork, and it is a smart, strategic step in building a strong and successful brand. A registered trademark gives legal ownership, prevents others from copying the brand, and adds real value to the business.

Avoiding common mistakes during the registration process like choosing the wrong class, using inconsistent branding, or not planning for future growth can save time, money, and legal disputes. Taking a careful, informed approach ensures that the brand stays protected, recognizable, and competitive in the long run.