FAQs on Trademark Registration in India – Part IV

This is the fourth post in a series of posts relating to frequently asked questions. The first, second and third posts are available here, here and here.

My registered trademark is becoming generic, what can I do to protect it?

In the past, companies such as Google and Xerox had successfully defended their trademark from becoming generic. However, you are expected to be pro-active from now on and consider the following guidelines –

  • You have to now start using your trademark with some word/s of common usage, for example, Google – The best search engine. You would want your consumers to say like this, “Use the search engine ‘Google’ on the internet”, and not like, “Google it on the internet”. That is to say, you must not use your trademark as a verb, rather use it as an adjective.

To effectively carry out the above, you must spread the word of awareness all around, by advertising, and imparting knowledge to your consumers, your employees. You have to reach the consumers in a new manner so that the consumers are able to relate and ‘identify the source of your good/service’ back to you.

You may choose to amend your trademark and use capital words or capital letters in it, which could help differentiating your trademark. You may also consider using a different form or typeface.

You must start using the (R) mark, in case your trademark is registered. In case it is unregistered, you may use TM or SM, so that consumers are aware that it is your trademark. In the end, it is all about spreading awareness and educating people.

Additionally, you may consider carrying out awareness campaigns. Just like BAND-AID did, you may extend the meaning of your trademark to different product/services.

What all considerations should be borne in mind while entering into a Trademark licensing agreement?

If not anything else, at least the following things should be kept in mind while entering into a TM licensing agreement.

1. It must be borne in mind that ‘no ownership rights’ are transferred.

2. Royalty/fees to be given by the licensee to the licensor.

3. The rights licensed must be very narrow. Eg: It could be only for a product, or it could be only for a product for a specific event at a specific location for a particular week.

4. Registering the licensing agreement with the Indian trademark registry.

5. The rights and liabilities of the licensor and licensee must be listed.

6. An arbitration clause, in case of any conflict, specifying the venue and seat of arbitration.

7. The term of contract.

8. The parties involved as a licensee.

9. Period of royalties and mode of payment

10. Any quality standards to be prescribed to the licensee.

11. Bearing in mind not to have excessive control over quality or it would lead to a franchising agreement.

12. Specifying the licensed marks.

13. Whether the license is exclusive or non-exclusive?

14. Specifying the goods/services in respect of the license.

15. The territory of use by the licensee of the licensed mark.

16. Whether sub-licensing permitted?

17. Terms of renewal.

What are some of the preventive litigation TM strategies?

Trademark monitoring service includes a variety of tasks in order to protect your trademark portfolio. Your trademark portfolio would include your Trade Mark and/or Service Mark, any slogan or key line associated with your mark and business, it also includes the domain names used by your business.

A trademark portfolio enforcement strategy could be offensive and/or defensive, as per your requirement.

Offensive strategies include: carrying pretext investigation, litigation, filing opposition applications in respect of similar marks, sending cease and desist letters, publishing warnings online and offline and registering the mark with custom and border agencies.

Defensive strategies include: getting the registration of the marks, then surveillance and monitoring them for possible infringement.

Further, trademark audit may be carried within the company in order to recognize the product/ services that are registrable as a mark under the Trademarks Act, 1999.

Image from here.

Siddhant Sharma

Siddhant is a Patent and Intellectual Property lawyer. He finds joy in exploring and writing about niche areas of law. He is finding better ways to describe the patent profession to a five-year old and a sixty-five year old.

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