Trademark Search:

In addition, to creating a strong trademark as your brand, it is important to ensure that the trademark you have created as your brand is not used by anyone else across the world. Though trademark law is territorial, with the advent of the Internet and mobile technology, the world has become one market place. Barring a few, the consumers of the world are targets of emerging businesses and the trademark that you choose should be done with global customers in mind.

One of the common problems, as a startups or new businesses face, you may face in India, (going by the recent news) is receiving a cease and desist notice or facing a trademark infringement/passing off case in Court by another brand owner immediately after the launch of your brand in the market. In many instances the business who is the earlier adopter/user of the trademark will get an injunction from the Court against your use of the same or similar trademark. There have been several instances, where in furtherance of a court order the social media presence, business listings, apps from the app store are pulled down by the earlier trademark owner without any notice to the startup. Recently Facebook pulled down the business page of houzify.com after complaints of trademark infringement was made by houzz.com. At the time of it being pulled down, the Facebook page of houzify had close to 54000 followers. While the Indian startup community is not so happy with the way Facebook handled the whole issue, we will have to wait and see the outcome of this matter.  As you can imagine this can have serious repercussions on your business and your brand.

A simple trademark search online prior to finalizing your trademark will save you for all these hassles. There is a misconception that it is expensive and time consuming to perform a trademark search online to clear your trademark. Though it is advisable to engage a professional lawyer specializing in trademark services, a preliminary clearance search online can be done with a few clicks of your mouse.  Many countries keep their trademarks register online and open for public to access without a fee.

In many countries, especially common law countries including India registration of a trademark is not mandatory for seeking protection. In such cases, in addition to searching the online trademark databases, it would also be worthwhile to spend some time searching the Internet using google to see if there is a remote possibility that any business out there is using the trademark similar to what you have decided to use.

Some of the recommended databases to search your trademark online are listed below.

Trademark Search in India

Trademark Search in USA

Trademark Search in Europe – OHIM and Community Trademark Applications

Trademark Search – Madrid System (International Trademark Registration)

Trademark Search in UK

Trademark Search in Singapore

Trademark Search in Canada

Trademark Search in Australia

Trademark Search in New Zealand

Trademark Search in China

 

Trademark Search in specific classes Vs. all classes.

Many countries follow the NICE Classification for the purpose of offering trademark registration. However, when performing the search, it is advisable to search the related classes and in some cases all other classes in addition to the class in respect of your business. A good reference for related classes would be from the UK trademark Office on cross search table. Trademark protection is offered for the use of a trademark in specific classes depending on the goods and services that your business deals with. Does this mean that you can use a trademark already registered in respect of cosmetics (class 3) for clothes (class 25)? The simple answer is no, however there are certain exceptions.

Why conduct a global trademark search when my business will use my trademark only in India or my market is only India?

As mentioned above with the Internet there are no frontiers for any businesses. Time and again Indian courts have held that the world is one market place. The other party not having a physical business presence or use of their trademark in India does not give you the right to use a similar or identical trademark. Access to the Internet enables consumers to have knowledge of these brands even if they are not in India. In several cases the courts held that use of the trademark on the Internet and that being accessed in India amounts to use of the trademark in India,.

Having said that, it is also important to ensure that the genuine rights of the Indian businesses are protected and the Courts have never failed in their duty to do so. In M/s Pops Foods Products (P) Ltd. v. M/s Kellogg Co., a trademark “POPS” registered by Kellogg Company possessing global recognition was ordered to be removed by the Intellectual Property Appellate Board on the grounds of non-use for 22 years. Prevention is better than cure. It would be prudent for a business or a startup to spend their energy on building their business rather than to spend their resources on fighting a case on their trademark rights because they failed to do a trademark clearance search.

Unfortunately, the most underrated service in your brand building process is the trademark clearance search. However, a trademark clearance search should be the corner stone in your foundation for building a strong and long lasting trademark for your business.

Would be happy to hear how you decided on your brand and if you searched the online trademark databases before you launched your brand.

 

Raja Selvam

Founder & Managing Attorney, Selvam & Selvam | Practice areas include Trademarks, Patents, Domain names & Business law. Visiting faculty, Department of Journalism, Madras University where I teach copyrights & trademarks law. Passionate about entrepreneurship, start-ups, stocks, farming, technology and law.