I have a startup story and it’s not a pleasant one. So if you’re expecting to read tales of college grads hunched over laptops in a basement, who created something unique, got funded and are billionaires by the time they are twenty eight, stop reading right away.

I’m serious…. This here, is a story of how valuable trademark rights are, and the perils of ignoring them.

I was approached by the founder of a startup about 6 months back because he had received a legal notice alleging trademark infringement from an Indian pharmaceutical company. The startup was providing a service through their website and mobile app and had recently re-branded and registered a domain let’s say ickki.com [did you really think I would reveal the actual name?!].

As it turns out, the pharmaceutical company had been selling one of their many products under the name icki and had been doing this for over 15 years. The legal notice was a brief one, just informing the founder that they had come across ickki in a newspaper write up on their recent funding of several hundred thousand dollars and that they weren’t impressed. They wanted the startup to stop using the trademark ickki in any manner since it was deceptively similar to theirs.

The founder of the startup was an extremely smart chap, but in his mind, there was no confusion, since icki was just a drug and his was a domain. He was under the impression that ickki.com as a whole (including the .com portion) was a trademark in itself and different from the other mark.

He was also rather keen on pointing out the difference of one letter – ‘k’ or the lack of it with the pharma company’s trademark. He felt that Ickki was different from icki on that footing.

So was he stuck with no options at this stage? No.

With the law there are always multiple strategies that can be used. After attempting to dispel the misconceptions on the domain as a trademark issue and that removing one letter but having the marks sound the same isn’t a great defense, I went on the suggest ways of arguing the matter. There was also something about the no nonsense tone of the pharma company’s legal notice that gave me the impression that they wouldn’t think twice before going to Court, unless this was handled swiftly and appropriately. So to counter that, I’d advised the founder to file Caveats (An application filed with a Court if you anticipate a threat so that no orders can be passed without giving you a chance to present your side)

Unfortunately the founder felt I was making a big deal of the whole ‘Trademark’ issue and felt he’d deal with the whole issue on his own. I never heard from him after that.

While going through the list of IP judgements that had been passed in the last week, I came across an order passed by the Delhi High Court holding that the startup had to stop using the trademark ickki in any manner and ordered the shutting down of the website. The order was passed on an urgent basis without even giving the startup a chance to be heard. [It looked like he didn’t file the Caveat after all] The order has to now be appealed and a stay on the injunction can be obtained, but that would involve some serious legal costs. An injunction against the startup, even if it means they have to change their name is bound to shake the faith of the investors and cause un-necessary problems.

Is it the end of the world for them? No! But it is definitely a problem that could have been avoided. Unfortunately this story is not a one off. There are far too many Indian startups and businesses in general that ignore the importance of trademark rights and there are numerous disputes such as these that are coming up these days. The same Internet and social media publicity that puts startups on the map also brings them into the cross hairs of IP holders.

So does that mean you crawl up in your corner and sulk? No!

A very simple solution lies before anyone starting up a business – Do a trademark search and get proper legal advice.

  1. Pick a good name – This name is for what you will call your company/entity and the product that you will be offering. Chose the names wisely so that you create something that’s unique and doesn’t infringe on someone else’s rights
  2. Once you’ve come up with a distinct and unique name [misspelling existing words don’t count as unique] you have to conduct a trademark search. The records of the Trademark Registry has to be searched for a given trademark in the class of goods or services that the mark is going to be used for.
  3. It’s not enough that the search is done only for the interested class. The trademark search has to be conducted for related classes as well.
  4. With Google around, definitely do a basic Google search to see if there are any other entities in the market – India is a common law country, so even if a trademark has been used but not registered the rights can be protected. That means even if a trademark didn’t pop up in the Trademark search of the Registry, but a Google search shows it, don’t ignore the results.

So while you’re focusing on launching a great product or a service, it’s easy to put legal issues on the back-burner. While it’s a probably a natural instinct, it may not be in the best interest of your business as you may never get the chance to show the world your capabilities when facing a litigation at the very beginning.

You don’t want to be all dressed up with nowhere to go!

This article has been authored by Navarre Roy, an IP Law practitioner.